Matthew Lee:                  

Hello and welcome to IP Australia's Webinar on understanding patents. My name is Matt and I'm from the communications team here at IP Australia. Alongside me is also Ezrela Hollis and Heather Abufalia, who are going to be presenting the information to you today.

 

Matthew Lee:                  

Now, the topic that we're covering today is going to be patent and what we'll be looking at is a focus on patent which will have the basics of intellectual property with an overview of the registered intellectual property system. Also, cover some of the non-registered types of intellectual properties such as copyright and trade secrets. Then we'll have a further look into patent, specifically to explore the different types of patent protection, understand the filing requirements for an Australian patent application and learn the basics of patent searching.

 

Matthew Lee:                  

Before I hand over to Ezrela and Heather, I'll tell you a little bit about them. Both of them started here at IP Australia in 2016, where they primarily examine medical device technology. Heather has studied biomedical engineering and mechanical engineering before starting at IP Australia and she completed honours research into the material properties of the brain and how this affects the migration of brain cancer cells. Ezrela has a degree in medical science as well as nursing, and she's done work previously to improve patient assessment processes, driving prevention, detection and early treatment. Without further ado, I'm gonna handover to Ezrela and Heather with Ezrela kicking off. Thanks very much.

 

Ezrela Hollis:                      

Thanks Matt. Firstly, I would like to introduce what it is that IP Australia does. IP Australia as an organisation is probably most known for administering Australia systems for patents, trademarks, designs and Plant Breeder's Rights. We also undertake public education and awareness programs about IP as well as provide policy advice to government on IP issues. We also contribute to trade negotiations and international forums to improve IP rights protection in a global scale and something less well known, is that we administer the registration and discipline of patent and trademark attorneys.

 

Ezrela Hollis:                      

What is intellectual property? Intellectual property can be defined as the application of the mind to develop something new or original, but a simpler way to think about it is that it's anything you create like a new invention, brand, design or artistic creation but these by no means is everything and you will see that as we discuss more throughout the presentation.

 

Ezrela Hollis:                      

Now, there are four different registered IP rights that IP Australia deals with and as you can see from your screen, these are divided into four categories patents, trademarks, designs and Plant Breeder's Rights. A great example of how IP is present in everyday life is the Victa lawnmower here on your screen. First, the patent. Patent is a rights granted for a device, substance, method or process that you have invented. Patents are legally enforceable and it gives you the exclusive right to commercially exploit your invention for the life of your patent. In the case of Victa Lawnmower, a patented for the way the cutting blades were recessed under the machine was granted in 1975.

 

Ezrela Hollis:                      

A trademark is usually the way of identifying a unique product or service. Sometimes it is also called a brand. Your trademark is your identity and it is the way you show your customers who you are and with the Victa Lawnmower, the brand Victa was first trademarked in 1958. A registered design protects the visual appearance of your product. For example, a shape configuration patent and ornamentation which when applied to a product gives it a unique visual appearance.

 

Ezrela Hollis:                      

Again, in the case of the Victa lawnmower, the engine design created by Carl Anthony Norton was protected in 2007. Last but not the least is Plant Breeder's Rights. These are exclusive commercial rights to a registered variety of plant for reproduction, propagation, sale, import or export. And again, in our example of the lawnmower, Sir Walter Turf was developed by Buchanan Turf Supplies and was registered as a Plant Breeder's Rights in 1998. Now, there's also a number of unregistered IP rights some of which include copyrights and trade secrets.

 

Ezrela Hollis:                      

In terms of copyright, there is currently no system of registration for copyright protection in Australia. Copyright protection is free and automatic from the moment work a work is on paper or otherwise put into material form. However, unlike the registered IP rights I have mentioned, copyright is administered by the Department of Communications and the Arts and not IP Australia. It's good to note though that it is the employers that generally earn the copyright that an employee creates. However, it is not the same for contractors. With trade secrets, subject matters are usually defined in broad terms and includes but not limited to sales methods, distribution methods, consumer profile, advertising strategies, list of suppliers and clients and manufacturing processes.

 

Ezrela Hollis:                      

Broadly speaking, any confidential business information that provides a business a competitive edge may be considered a trade secret, they encompass manufacturing or industrial secrets and commercial secrets. Note here that trade secrets should always be backed with signed confidentiality agreements and they should be obtained from every person who has knowledge of the secret to provide you further protection through the law. Now, many companies have highly protected trade secrets or confidential business information that gives them some kind of an advantage in the marketplace, and some examples of trade secrets are KFC's 11 secret herbs and spices or Coca-Cola's Coke recipe.

 

Ezrela Hollis:                      

Why even register your IP? We've seen that some IP can be registered and some doesn't need to be but why should you register your IP or even be worried about it at all? Well, the best argument for registering your IP is that it tells the world that you've developed this IP by a particular date and that you're protecting it. It can deter anyone else who wants to come along and do work in the same field or even copy your work.

 

Ezrela Hollis:                     

It would also help with your research and development because once you have taken the steps to register your IP, you can then more freely disclose your invention and ask others for help. Also, every bit of protected IP becomes a valuable asset that can attract buyers and investors who will want to do due diligence on your IP assets in any potential acquisition. Alternatively, you can franchise or license out your IP for royalties or license fees. To give this more light, you can think of owning registered IP assets like owning a house. You can own it and live there yourself or you can rent it out to others who pay you rent for using it or you can even sell it off to someone else but there's also plenty of reasons why you might decide not to register your IP.

 

Ezrela Hollis:                      

Firstly, there's cost. Cost is by far the biggest issue that most of you will face with registering your IP. As an example, if you're looking to get a provisional application drafted by a patent attorney. This initial step alone can cost you anywhere between $4000 to $10000 and this is only the first step in many steps, each one costing more money and if you decided to sue someone to enforce your rights. The costs of going to court can be upwards of hundreds of thousands of dollars.

 

Ezrela Hollis:                      

Another reason to not register your IP is because there are other unregistered IP rights and as I mentioned earlier, there are other alternatives like copyrights and trade secrets that don't cost any money to acquire. The level of protection will be different though but this may be enough for your situation. Finally, you might decide to go away from the protection route and release your IP either by releasing it open source or to the public domain and letting the public use it. If you do that, then you prevent other people for coming along later and registering the same invention and doing the same thing.

 

Ezrela Hollis:                      

On a quick note, a quick question to everyone. How many of us have or know of anyone that owns a Tesla car? It's probably fair to say that the market is pretty small. Tesla has recognised this so they've released all their patents on their electric car engines into the public domain. As we've shown, there really isn't a huge market for electric cars. Naturally, Tesla will rely on other things like infrastructure. That is the more cars that are built even just using their engine specifications, the more Tesla will benefit because the market is being created for them.

 

Ezrela Hollis:                      

In other words, Tesla has banked on their brand recognition through the Tesla name to boost its market. This emphasises the importance of doing your market research to know which IP right is right for you. Not only to avoid unnecessary costs associated with applying for a patent but also, to know what route will benefit your company the most.

 

Heather Abulafia:                     

Now, another question to everyone. How many of us have one of these powerboards at home? I know I have about 10 of them at home. In 1972, Frank Bannigan, the founder of Kambrook invented the first electrical power board. Kambrook then went on to sell these in stores but unfortunately, they did not patent the power board and ended up sharing the market with a lot of low cost competitors or copycats. The true cost of not protecting your IP is the loss of market share. While the costs associated with protecting your IP should be factored into the benefit of the market share, sometimes we don't know if we're going to be a big success.

 

Heather Abulafia:                     

If you're solving one of life's big problems like the limited electrical outlets, then maybe don't take a leaf out of Kambrook's book. This case is a bit different to Tesla's since there's a massive market for power boards. Pretty much anyone, anywhere that uses electrical outlets will use one of these. If they'd done their IP research, Kambrook would hopefully have recognised that power boards are cheap to produce and will have massive market appeal globally. My take home message for this is do your research.

 

Heather Abulafia:              

Now what is a patent? As Ezrela briefly mentioned before, a patent is a legally enforceable right for a device, substance, method or process. Obtaining this legal right means that you, the owner, will be the only person in Australia who can commercially exploit your invention for the life of the patent or authorise others to do so. In exchange, you must publicly disclose the details of your invention. Your invention must also be new, inventive and useful. So what can be patented? For anything to be patentable, it must comply with the rule that the invention needs to be a manner of manufacture.

 

Heather Abulafia:              

This is a rule that generally only allows patents for certain types of inventions. These include traditional inventions like appliances and mechanical devices and so on, but it also includes computer related inventions, business methods, biological inventions, microorganisms and other biological materials, but you can't get a patent for human beings or their biological processes for their generation, artistic creations, mathematical models, plans, schemes or purely mental processes.

 

Heather Abulafia:              

Now, a few of you listening are probably wondering what can be patented in the software space. In terms of software, the current practice is that even though computers themselves are physical objects, if your invention is about the software itself, it's probably not patentable unless you can demonstrate that it has some kind of technical solution such as improving the way a computer works, for example improving the graphics processing. This also means that generally apps are not patentable. Most apps are looking at ways of doing things more simply or conveniently but they don't actually produce anything themselves.

 

Heather Abulafia:              

Manner of manufacture is always assessed on a case by case basis, so if you're not sure whether you have something which qualifies or not, we do recommend that you seek professional advice. Now to hopefully make this a bit more clear. Let's say you've invented a novel compact blood pressure monitor which is connectable to a mobile device and an app that instructs the blood pressure monitored to inflate as well as recording and displaying the user's blood pressure measurement. You can't patent the app on its own because it's simply using the mobile device to execute simple instructions, store and display information and this is not patentable.

 

Heather Abulafia:              

What you can patent is your novel compact blood pressure monitor and the method of using the app when connected to your novel blood pressure monitor. You could also patent a method of using an app that uses a new kind of algorithm to more accurately measure blood pressure. This solves the technical problem of improving the accuracy of the digital measurement and the mobile device is merely a tool to perform the method. Now I'll pass back to Ezrela who will give you some more details on how patents are assessed.

 

Ezrela Hollis:                      

Now you know that patents provide the inventor with protection for that invention, but before you consider what type of patent best fits your business delivery, it is best to know that there are two type of patents, standard patents and innovation patents. A standard patent gives you long-term protection and control over that invention. It lasts for up to 20 years from the filing date of the complete application and up to 25 years for pharmaceutical substances. An innovation patent on the other hand only last up to eight years and is designed to protect inventions that do not meet the inventive threshold required for standard patents.

 

Ezrela Hollis:                      

Because innovation patents do not go through examination before grant, it is usually granted within a month of filing the complete application. This avenue is a relatively quick and inexpensive way to get protection for your invention. Like I said before, innovation patents provide shorter term protection. If you believe your invention will be superseded by something more advanced say technology based devices like mobile phones. Then maybe an innovation patent is all that you will require to give you protection to enter the market and commercialise your idea.

 

Ezrela Hollis:                      

When deciding what patent protection you need consider if your invention is likely to be superseded in the next eight to 10 years. For example, if Samsung released a phone today based on a five year old technology, they go broke. This is because this type of technology moves so fast that a standard 20 year patent is going to be an overkill and an innovation patent would be likely be a better let it go but again, do your research. You should note though that recently the productivity commission has recommended abolishing innovation patents and this has been accepted by the government. This is still pending legislative change, so keep in mind that innovation patents won't be available for much longer.

 

Ezrela Hollis:                      

Now coming back to assessing patents. When we assess standard patents, the invention claim in the patent must be new. In other words, novel. Involve an inventive step and be useful or in other words, be able to be made or used in an industry. First, the concept of novelty. To determine if your invention is novel, patent examiners like myself and Heather search all public registers, online or journals and other sources to see if your invention already exists. This search for your invention is called a prior art search. This is also something you can do in your market research to help you determine whether or not it's worthwhile filing for a patent.

 

Ezrela Hollis:                      

If prior art exists, like if your invention is found in Google. Your ability to have your invention patented will be somewhat limited but if there is no prior art found your application may pass  the novelty test. It's great news for you if you can't find your invention in the prior art. It means your invention is new. This then means that when you're developing your patent application or at any stage of development, it is most important that you keep your invention under wraps until you have made the decision to file for a patent because even verbal disclosure or a display at a conference or anything that can cause your invention to be in the public domain will deny novelty for your invention.

 

Ezrela Hollis:                      

The concept of usefulness may not mean what you think it means. Generally speaking, most inventions are going to be useful to somebody. What we assess when we look at usefulness is looking to see if your invention has a specific and a credible use. A good example of something isn't useful is something which might define known laws of physics such as a perpetual motion machine or if you discovered a new law of nature like when Newton discovered gravity when the apple fell on his head. Newton couldn't patent gravity itself but he could have patented a method or process that relied on gravity.

 

Ezrela Hollis:                      

Now, a little closer to home could be something like a research group that has isolated a new compound from some plant but has no idea what it does. They couldn't patent that new compound per se without having at least some kind of use for it. Otherwise, it's just mere curiosity. Another aspect we assess is inventiveness. The easiest way to think about this is, is it obvious? In other words, if your invention is found to be novel, would someone who knows what they're doing in your particular field look at what is already in place and come up with your invention? And, just quickly for innovation patents the test for novelty and usefulness are the same. The main difference is between the assessment of inventive and innovative steps.

 

Ezrela Hollis:                      

What is the difference between inventive and innovative steps? Well, an inventive step means that the invention is different enough from the prior art in a way that it wouldn't be obvious to try. This normally covers larger advances in technology. For example, let's think about the transition from floppy disks to USBs. Floppy disks use magnets, whereas USBs use electrical charges. The use of this new technique would not have been something that was obvious to people at the time. Therefore, this transition involves an inventive step.

 

Ezrela Hollis:                      

In contrast, whilst an innovative step also looks at the difference between the invention and the prior art. It looks more at whether the claim innovation makes a substantial contribution to the invention or not. That substantial contribution needs to be something that affects the way the invention works or operates. Something like changing the colour on a bicycle isn't going to be innovative especially, if it is for aesthetic purposes only. Generally speaking, innovations are for small advances in technology rather than the bigger strides found in standard patents, so whether the advance is obvious or not isn't relevant.

 

Ezrela Hollis:                      

As an example, an innovative step in this case would be if you were the first person to create a USB drive with a revolving lid to protect the USB plug. This lid makes a contribution to the working of the invention by say, protect the USB plug from being damaged and being built in a way that you can't lose the lids and so long as no one has done it before, in other words it is novel, then it involves an innovative step albeit not a groundbreaking one.

 

Ezrela Hollis:            

Now, for some relevant timelines of standard patents. When filing for a standard patent, you'll firstly need to file a provisional application. This secures you the priority date of your application. Your application will then be published 18 months after this priority is established. You then have 12 months to file a complete application. Examination generally occurs anywhere between three to five years after the priority date. This is where we assess the novelty and inventiveness as well as other legislative requirements of your application. This is also where we issue examination reports and this process can go back and forth until the patent examiner is satisfied that your application is ready for acceptance.

 

Ezrela Hollis:               

Note here that you only have up to 12 months to get an acceptance and once accepted your application is advertised for three months to allow the public to launch an opposition. If there are no opponents, your application then proceeds to grant. As with standard applications, you also have 12 months to file a complete innovation application after filing a provisional. Your application almost immediately proceeds to grant and then your application is published. This grant however does not mean that your innovation is legally enforceable. It is important to note here that for an innovation patent to be legally enforceable, it needs to go through the process of examination.

 

Ezrela Hollis:    

A request for certification either by you or a third party will result in your application being examined shortly after the request is lodged. This will cost you around $500 but that cost is half if a third party makes that request. The process of examination for innovation patents is the same as standard patents but instead of inventiveness, we assess the innovativeness of your application. If there are no objections, however, or if you've overcome our objections with regards to novelty, usefulness and innovative steps. Then your application is certified and is now legally enforceable.

 

Ezrela Hollis:   

Now, this slide will hopefully give you more light about provisional applications. Remember earlier I talked about prior art in relation to the rules around novelty and inventive or innovative steps. To determine where we draw the line in terms of whether your invention is novel and inventive or innovative, we look at the priority date of your application. As a general rule, a provisional application is when you first file a patent application that describe your invention in detail. This gives you your priority date.

 

Ezrela Hollis:           

To get the earliest possible priority date on your invention file for a provisional as soon as you can. This, of course, will be limited to whether or not you have and are satisfied with your patent specification. As I mentioned before, whilst a provisional application doesn't give you patent protection. It does establish a priority date. You then have 12 months to file a complete application if you want to continue on and patent your invention. This 12 month period gives you time to determine whether your invention is worthy of further time, money and effort associated with filing a complete application for a patent.

 

Ezrela Hollis:

If you, however decide to pull the plug, your provisional application doesn't get published so you don't have to worry about competitors getting wind of the details of your invention and this way you might still be able to continue your work as a trade secret down the track if you so wish. It is also important to note that you can file multiple provisional applications and these can all form the basis of your standard application but to keep the priority date of the oldest provisional application you need to file your standard patent application within 12 months of that first provisional.

 

Ezrela Hollis:

Just a word of warning though, you need to put all information about the invention that you want to protect into your provisional application because otherwise you might not be able to get protection in those aspects if you only include them later on. This unfortunately means that the cost of getting a provisional application is higher than what it used to be. Something like $110 if you use our eServices but it could be more if you decide to get an attorney on board. So something to keep in mind.

 

Heather Abulafia:                             

Now how many people here have heard of any international patent? Well unfortunately there is no such thing. If you want patent protection in each and every country, you'll need to file in every individual country and this again is where your research comes in and where the PCT system comes in. The PCT system is an international pathway to enter your patent application into several countries where you might want to commercialise your invention.

 

Heather Abulafia: 

Filing in the PCT system gives you a priority date in all of the countries that are members of the system. There are a lot of countries that are members, so if your invention is likely useful internationally, this is a good route to use. In the case of the Cricket Cooler, the inventors understood that their novel invention would generate interest from Australian families who enjoy an outdoor game of cricket at the beach with a beer or two. They currently have granted patents in Australia and New Zealand and have applications in South Africa and India.

 

Heather Abulafia:                     

Thinking beyond the Australian lifestyle and our domestic market. This product has the potential to be sold in international markets or licensed through the international cricket fraternity. Having a registered patent provides security as your business expands its operations internationally. In Australia, we act as a receiving office, international searching authority and international preliminary examining authority under the Patent Cooperation Treaty.

 

Heather Abulafia:                      

Now just a quick word of warning before we jump into the next slide. There is a lot of arrows and small text but I will give you an overview of the timeline of the PCT application. The advantages of filing a PCT application is that you've have plenty of time to decide which countries you wish to  enter national phase. It may also be a simpler process to file a single PCT than multiple applications in each country. The default is that all countries are designated so you don't need to pick and choose countries nor does this change the fee for filing a PCT. A PCT application consists of the request form and the same documents as a standard patent application, which Ezrela will elaborate on shortly.

 

Heather Abulafia:                       

After filing a PCT application, you'll receive an international search report and international search opinion, which indicate the validity of your patent application and if there are any inventions out there that are similar to yours. This report and opinion aren't binding but simply provide some preliminary information to you and other international offices. This also useful to get some early feedback for refining your patent strategy. Your PCT application and the international search report will then be published 18 months after your priority date.

 

Heather Abulafia:                        

Now, there are a few more optional steps that you can take to amend your application and get some further opinions, but irrespective of what you do an international preliminary report on patentability will be established and this is what will be sent to countries where you have designated to international phase. At national phase, your application will be sent to each of your designated countries as an application in that country. The time limit for entering national phase varies from country to country. In Australia, you have up to 31 months after your earliest priority date to enter national phase and will likely enter examination phase shortly after that.

 

Heather Abulafia:                        

Each country has different examination requirements and even if you've had no problems with any reports or opinions so far, it doesn't mean that your invention will be initially considered patentable in every country where you've chosen to international phase. We recommend that you seek legal advice when you choose to go international. Now, at this point you might be wondering whether a patent is the right choice for you. If you've developed an invention, you should decide whether patenting it should be part of your business strategy. There are some obvious benefits to using the patent system.

 

Heather Abulafia:                       

By obtaining the exclusive rights for your patent, this acts as a deterrent to others who might seek to infringe on your rights to sell or manufacture your invention. Also, once you've filed your application to start the process and secure a priority date. It provides a safety net so you can more freely disclose your work such as seeking out investment or collaboration opportunities but you do need to consider, do you want the world to know the finer details of your invention? Patents take a number of years before they're registered. Is this time frame factored into your business delivery? If you're developing a physical article, could you use a design right to protect your product or perhaps keep it a trade secret?

 

Heather Abulafia:                          

If you decide not to get a patent, you should also consider publishing your work so that others can't obtain their own patent for it later down the track. You can still monetise your invention like Tesla Motors did. They've released their patents into the public domain to build up the electric car market and infrastructure but they're still manufacturing and selling their cars regardless.

 

Heather Abulafia:                        

Now the costs. The use of a patent attorney will be costly. However, these fees need to be seen as an investment in your IP. IP Australia has no ability to regulate what an IP professional charges for their services and more often than not small businesses do find the fees associated with the development of a patent specification are a little expensive. As Ezrela mentioned earlier, getting a provisional patent drafted can cost you anywhere from $4000 to $10000. IP Australia's fees are much lower. They're only a few hundred dollars at each stage and are tiered so that you spread the cost of registration over the life of the patent.

 

Heather Abulafia:           

A full digest of our fees are available on the IP Australia website. If you file your own application you can save a significant amount of money but sometimes the best thing to do might be to prepare as much as you can yourself and take that information to an attorney. Now some of the expenses associated with patent fees could be classified as a business operating expense, so you might be able to claim a tax deduction. The best person to give you advice on this would be your accountant or the ATO.

 

Heather Abulafia:                          

Now lastly you need to consider whether you can enforce your right. Once you've registered your IP right it's you that is responsible for enforcement. This means that you or your IP professional will need to enforce your IP right through the courts should you be infringed and want to take action upon that infringement. This process is also expensive and can require a significant amount of time and effort when pursuing someone. Make sure you think about all these things before jumping into the patent system.

 

Ezrela Hollis:                      

A standard patent specification normally consists of an abstract, a description, drawings and your claim set. Patent abstracts are generally quite informative and are usually enough to provide a comprehensive overview of your invention. Although in some cases, applicants intentionally make certain parts of their abstract ambiguous and this is allowed. These are commonly seen when an invention could reasonably be used in a number of different ways for a number of different applications. In which case, a trained individual will recognise the cross-applicability of the invention and can easily check the claims and description for additional information.

 

Ezrela Hollis:                      

This slide shows you an example of a bad abstract. Although it provides context to the invention, it is somewhat limiting in that it doesn't provide enough description about the invention. You may ask why is too little information a bad thing, especially if you want to protect your invention? This is because it prevents the companies to be able to find your invention when they do their own freedom to operate searches. If they come across an abstract that does not provide adequate information, they may miss it in their search and start producing or even selling your product. You will now then need to defend your patent and deal with their infringement actions, which can be a very costly exercise.

 

Ezrela Hollis:                      

In contrast, this is an example of a good abstract. As you can see in this KeepCup example, the abstract doesn't reference the brand name of the cup and it doesn't explicitly mention coffee cup. This abstract provids a very broad definition of the product in that the product could be used to hold other beverages as well aside from its primary marketed purpose, which is coffee. This is a very good example of drafting an abstract in a way that demonstrates cross-applicability, which later on, so long as this is reflected in their claims would enable the applicants to broaden their monopoly to produce any cup that falls within the scope of this specification and not limit their monopoly to just coffee cups.

 

Ezrela Hollis:                      

A description normally forms the bulk of your specification. This is where you differentiate your invention from the prior art. It should also describe how all the parts work and this is usually best described when features are referenced back to the drawings. Your description should demonstrate that your invention works in real life by giving examples of an end product or a method of doing something. I think it is also worth mentioning that if you have a technology based patent, the bulk of your description may be derived from your technical or functional specifications.

 

Ezrela Hollis:                      

If you're, however not developing the technology yourself, you can ask your engineer or coder to provide this level of detail as part of their development contract. If you are developing a physical product on the other hand, perhaps consider what instructions you would include in the packaging. This information will help you describe the functionality of your invention to your customer. It would be handy to have this information form the basis of your patent specification. At a minimum, the description should be about three pages. However, most descriptions submitted are longer and some chemistry patents even have thousands of pages.

 

Ezrela Hollis:                      

You will also need drawings. Now it is essential that when drafting a patent drawings that you provide as much detail as you can to support your invention. Some key points highlighted on the screen might help you when drafting your drawings and as you can see on the right hand side of the screen, the main components of the KeepCup are labeled and referenced back to the description with reference numbers. This is manly to allow the reader to easily identify the key components of the invention and their functionalities. Whilst drawings are usually provided to our office using AutoCAD software, if you choose to submit hand drawings, these are also accepted.

 

Ezrela Hollis:                      

Here is an example of hand drawings and as you can see, the applicant has provided clearly labelled drawings with reference numbers for the different features of their invention. When the reader goes back to read the description, the features and functionalities of their invention would be easily and clearly understood.

 

Ezrela Hollis:                      

Finally, claims. When developing your patent specification, it is important to get this aspect correct and concise and this is when an IP professional comes in handy because they will be able to construct accurate claims that are more likely to be upheld if your patent was to be challenged through the courts. This means that your claims must be reasonable and define only one invention. Your claims at a minimum must be clear and concise and distinguish your invention from what is already known. They must also be consistent with your description. Most importantly, your claims provide the legal basis for your patent.

 

Ezrela Hollis:                      

Remember how I mentioned that owning a patent is similar to owning a house. To carry this a little further, if we consider a patent to be the deed to your house, the claims would be the same as your house's address. The house or patent specification may have lots of stuff inside but it is the street address or the claims which define what is yours. If a patent is the deed to an intellectual property, the patent claims are the properties street address. No matter what the abstract says and regardless of the extraneous information provided in the description, it is the patent claims that define the nature of the protected invention.

 

Ezrela Hollis:                      

This is an example of a good claim. Here the claims define the invention clear enough that anyone reading this claim knows what they can and cannot do. This is to show you that your claims not only need to be concise but also, clear enough to highlight the difference of your invention from the prior art and now we'll hand you back over to Heather for some searching.

 

Heather Abulafia:              

Thank you. Now before drafting a specification, you should perform a search to see what's been done before in the area of your invention. Performing a search prior to applying for a patent is vital for several reasons. Firstly, a search helps you determine whether you can protect your IP. For example, it will help you determine whether your invention is novel or new. This also helps you to determine whether you're infringing on someone else's IP. You can determine who owns an item of IP that is the same as your invention or something that's similar that you might need to license. Conducting your search will help with your business research such as identifying the competition.

 

Heather Abulafia:              

Even if you're not going to consider a patent, this is a very helpful research tool you can employ when you develop your IP strategy. Conducting a search prior to developing your application helps you determine what you can apply for. Using the example of the KeepCup, searching isn't as simple as typing coffee cup into Google. Patents are structured in a way that provides the patent holder with the widest claim possible for that invention. The coffee cup is more like a liquid holding receptacle or a re-usable beverage cup and the Aussie Esky could be a cooling box or a portable chilling device.

 

Heather Abulafia:              

To be able to search, you need to be able to think of all the possible ways your invention could be described. Think of what your invention would be called in another country. For example, Americans call a nappy, a diaper and a broader, more technical term used when we search for this would be an absorbent article. Now when do we start searching? You'll need to start searching early at your design conceptualisation stage. You don't want to waste money doing R&D on an idea that's already been patented and you might find that you'll need to pay licensing fees for certain aspects of your invention or will have to invest in inventing around concepts that are currently patented and enforced.

 

Heather Abulafia:              

Next, search at each stage of your design process. As your design changes, you need to update your search strategy. You'll need to continue searching for new patents that might infringe on your patent after your patent has been accepted and granted. You might consider paying an attorney firm to conduct infringements searches. Now where do we search? Well, start with Google. This might seem obvious but it gives you a good idea of what the general state of the art is. You can find useful tools for searching in Google by typing searching on Google into the Google search bar.

 

Heather Abulafia:              

Next, search using Google Patents. This is the easiest interface to use, provides good results from the algorithm and searches full text. The only drawback is that the databases do not include Australian citations and some old European and international applications but generally speaking, most people file in the US anyway. If you're after something 99% of the time searching the US database will be sufficient. If you want to check for Australian applications or other countries after your Google Patent search, you can put the publication number that you found into eSpace family listing. This will give you a list of all family member documents including Australian documents.

 

Heather Abulafia:              

eSpace is also good in general for searching in foreign countries including non-English speaking countries but the drawback is that you can only search for keywords in the title and abstract. You'll need to make sure you try as many variations that you can on your keywords. Otherwise, a good option is to use Lens. It's a meld of the two I've just discussed and will allow you to do full text searching but also searches widely across most country databases and next use AusPat if you want to look at a specific case and its eDossier, which will give you procedural history such as examination reports issued by us and whether the application is still in force.

 

Heather Abulafia:              

Finally, use Google Scholar to search for non-patent literature documents like journal articles. You might know some other specialist databases in your specific field. Now I'm going to give you a demonstration of how to search. Let's start by imagining a situation for example where your child never finishes their soft drink but wants to save it for later. You see where this problem is going. You might think to yourself, “Wouldn't it be great if I could get a resealable lid for my soft drink?” It would have to be able to seal the drink, fit most soft drink cans and be cheap and easy to manufacture because I don't think people would pay too much for this.

 

Heather Abulafia:          

I'm just gonna close this powerpoint and go into Google. So I've got Google Patents open here. And I've typed a few keywords. I've typed "soft drink" and I've put in quotation marks to search for that exact phrase. I've also typed the word can and you can see the quotation marks around that too. I've found out doing trial and error that the word can isn't searched if I don't put the quotation marks around it, and I've added the word lid. Search that. Now you can see on the left hand side of the screen here that Google Patents allows me to add synonyms. So for soft drink, I'm gonna add the name soda, which is what the Americans would call it,  and I'm also gonna add the scientific term carbonated beverage. For the word lid, I also wanna try synonyms including screw top and cover. And what I'm going to do is add and asterisk at the end of the word cover which is like a placeholder, so it'll search for things like covers and covering as well. Hit enter.

 

Heather Abulafia:             

I might click on the third result down. Let's have a look at that and see if it's relevant. I can look through the images and see the figure of a soft drink can with a lid. So it looks quite relevant at to my invention. What I could have also done at the start would be to have a look at what the general state of the art around lids for soft drink can. I've typed the same key words just into a Google search. I'll hit enter for that. Just under the search bar you can see images, so I'll click head into Google images. If you look through here, some of these kind of look like my invention too.

 

Heather Abulafia:             

I also was lucky enough to find my invention in the Reject Shop the other day for a bargain price of $4 for a pack of 12. So this shows us that if your patent exists, it might not be worth filing an application or you might need to find the details of your invention that differentiate it from the prior art which you have found during the search. I'll just get that powerpoint back open and I'll hand over to Ezrela to discuss how to engage an attorney.

 

Ezrela Hollis:      

Knowing what is involved in your first attorney meeting will help start you off in the right step. By understanding the initial process you can ensure your appointment is beneficial and also help your attorney to deliver the best possible service. Usually, your first contact will be a brief phone call where the attorney will try to establish if you have something that could be patented. The attorney will also want to confirm that they don't have a conflict of interest with another client with a similar invention.

 

Ezrela Hollis:             

Next step is the meeting. This is where the attorney will find out more about your invention, how you intend to make money from it and what already exists in the market. Note that you will want to bring all the information about your invention to this meeting including, for example, your technical specifications, information on market shares and your business plan. The attorney will also want to know if you have disclosed your invention to anyone else because this could affect your ability to patent it.

 

Ezrela Hollis:             

They will discuss your options with you including what type of patent to seek, when to seek it and whether you should seek international patents and if so, in which countries. They should also give you a good indication of what the process should cost. It is important to note that attorneys do not work for or represent IP Australia or any other part of the government. Your attorney won't instruct you on what to do. They are merely there as your guide through the patent process. This means that all decisions are ultimately up to you. Although, you should draw on the experience and expertise of your attorney to help you make them.

 

Ezrela Hollis:            

Lastly, it's important that you work with an attorney you can trust. If you withhold any information about your invention, this is only going to disadvantage you and remember that IP attorneys also have a strict code of conduct. You can be rest assured that they will keep your invention confidential.

 

Heather Abulafia:      

What's next? If you're considering a patent, you should start by researching your idea. You can use some of the tips I've shown to you today. Next, draft as much as you can of your specification and take that to an IP professional. Thank you.

 

Matthew Lee:                  

Well, thanks very much Ezrela and Heather, that was really informative. I think that next time if I ever go down to a $2 shop I'm going to be looking out for those soft drink can lids and I'll have to see if I can find as many as I can before I go and embark on this new venture. So I wanted to thank everybody for attending this webinar session today. The other thing I'll point out before we leave is that in the chat interface I've also included a link to our YouTube channel. We've recently uploaded a short demonstration video which will give you an introduction into patent searching, very simlar to what was covered here just a moment ago but with a little bit more detail about how to go through patent searching, what search engines you can use. It's designed in such a way that you can actually follow along and have a go yourself in your own browser at the same time as well. So  I encourage you that if you are going down this particular patent route, check out that video too. Otherwise, I think that wraps it up for this session, so again thanks very much and we hope to see you for the next event that we hold in the future. Catch you then, bye.

Last updated: 
Tuesday, March 10, 2020