106
FORUM IP
Avoiding the pitfalls of intellectual property. Ben Mott gives advice about securing your IP rights, the possibility of infringing others’ rights and an overview of the different types. ‘Intellectual property’ (IP) refers to the ownership of creations of the mind. IP rights are a set of legal rights there to guard innovators from imitators. There are two key ways to lose out with IP rights: infringing others’ rights and failing to secure your own rights.
Infringing others’ IP rights It’s possible to infringe IP rights that you never knew existed, and it’s possible to infringe without copying, eg. you might independently develop a new product then not be able to use or sell it without infringing another company’s patent, even if you had never heard of the other company and had no idea that they had any interest in a similar product. Before investing in any new project, it’s prudent to consider whether others’ IP rights might be problematic. The pragmatic option may well be to simply forge ahead with the project; there might be good reason to feel comfortable that IP rights are unlikely to be a problem. By way of example, if you are developing your own version of a competitor’s 25-year-old machine, you can take comfort from the fact that, generally speaking, no in-force patent can validly cover a product that was publicly known more than 21 years ago. Other times, ‘Freedom To Operate’ (FTO) searches for potentially problematic rights may well be called for, eg. if you are about to develop a product with similarities to a competitor’s clever new product, it might be foolhardy not to check for rights that the competitor could hold against you. FTO searching takes a wide variety of forms. A basic search for problematic trade mark rights might cost only a few thousand dollars. You might consider this basic due diligence when weighted against the risk of finding that you can’t use your new brand after you’ve invested in a marketing campaign and filled a warehouse with branded stock. On the other hand, general patent FTO searching can be a far more significant exercise.
Securing your own rights Copying is often permissible in Australia. Usually, others are free to copy your new manufactured products unless you take action to secure your IP rights. That action should be proactive. The invention/ design should be kept secret and not dealt with commercially before initial patent/design applications are filed. Australian companies often lose out because they wrongly assume that their new products or processes are not clever enough for a patent, whereas you don’t need something especially clever – a non-obvious advance is enough. If you have a new product/ process, the question is often not so much ‘can it be patented?’ but ‘should it be patented?’. This involves weighing up the likely return on the non-trivial costs of pursuing patent protection. How do the patent costs compare to the margin that you will lose if you face price competition from imitators? The sums are different for trade mark registration. I regard trade mark registration as ‘basic business hygiene’. Usually, the costs are a lot less than patent costs and equivalent to amounts that can disappear ‘in the blink of an eye’ if you ever find yourself needing to rely on unregistered trade mark rights to deter an imitator. Moreover, unregistered rights might not be available, eg. if you don’t yet have a reputation in the relevant market (or more to the point, can’t prove that you have that reputation).
AMT JUN/JUL 2021
IP advisors and final thoughts There are different types of IP rights (see side bar) and IP advisors have their specialities; a patent attorney is probably the right person to help you guard your new mechanical product, whereas you should turn to a copyright lawyer if someone has scraped details from your website. To avoid the pitfalls of IP, keep IP in mind and call your advisor whenever a potential issue arises. Any IP advisor worth their salt will be happy to have a brief chat without charge – and the advice might be that no action is called for, but at least you will know. Wadeson provides a wide range of IP services, combining engineering and IP experience across a wide range of technologies. Ben Mott is Principal, Mechanical Engineer & Patent Attorney. ben.mott@wadesonIP.com.au Ph: 03 9819 3808 www.wadesonIP.com.au
Intellectual property rights Patents can be used to stop others copying important functional details of new products and processes. They last for up to 20 years. Design registrations can be used to stop others copying the appearance of new products. Australian design registrations last for up to 10 years. Copyright provides protection for a wide range of ‘works’ including literary and artistic works, but Australian copyright usually does not protect three-dimensional products once in production. In most countries, copyright is automatic – there is no need to apply for protection. Trade secrets do not protect you from reverse engineering or from your competitors independently developing similar technology. Trade mark registrations can be used to stop others using your trade marks (e.g. name and logo). They can last indefinitely. Unregistered trade mark rights are also available to stop counterfeiters, but are usually harder to enforce and therefore less of a deterrent than registered rights.
