NSW Branch Report - 13 April 2021

NSW Branch Report - IP is not Immaterial - 13 April 2021

Source: Dr Andrew Gregory, Senior Associate Patent Attorney, FB Rice, agregory@fbrice.com.au

Intellectual property (IP) rights are intangible assets that protect original creations of the mind and proprietary knowledge. Being assets, IP rights may be sold and licenced. Since IP is a territorial right, the process for both obtaining and enforcing a granted IP right is dictated by the laws of the state granting the right. Consequently, the pathways and threshold for obtaining an enforceable IP right vary from one jurisdiction to another.

Obtaining IP Rights

Creations that need to be protected by trade marks, patents or designs involve a formal application, which is examined at an appropriate IP office. During the examination stage, the scope of the application (such as the claims of a patent application), is assessed to determine if the claimed matter is, amongst other factors, new and distinctive. If an allowable scope is established, IP rights are awarded that prevent others from utilising the protected invention or design, and allow legal action such as for infringement to be instigated.

Utilising IP

IP can be used strategically to achieve desired objectives, such as: • Business assets: translate confidential technology, know-how and trade secrets into potentially valuable assets. • Defensive publications and freedom to operate: prevent others from protecting creations in your area of business or expertise. • Collaboration tools: demonstrate your expertise in a specific area. • Negotiation and exchange: build up portfolios that provide leverage for negotiation. • Monetisation: licensing and sales. • Product development: capture ongoing innovations. • Deterrents: build up an arsenal of IP as a deterrent for others to enter a market.

Forms of IP

IP comes in many forms, each protecting different aspects of new innovations.

Trade Secrets

Unlike some IP forms, trade secrets are not disclosed to the public; the associated knowledge is retained ‘in house’. They can be very useful when used and managed properly (think Coca-Cola and the KFC recipes); however, it can be difficult to ensure they remain a secret! Trade secrets are arguably viable if the associated knowledge is hard to reverse engineer, providing a competitive advantage. However, if the information can be reverse engineered, a patent may be a better option.

Trade Marks

Trade marks are brands that serve to distinguish products and services from those of competitors. They can take a variety of forms, including: words, logos, shapes, colours, taglines and slogans or aspects of packaging. Trade marks act as a badge or origin, and a symbol of the consistent quality of your product or service. They also act as shorthand communication of a marketing message.

Copyright

Drawings, art, music, literature, computer programs, and typographical arrangements may be protected by copyright. Protection exists automatically for these creations; no registration is required once the creation is ‘fixed’ in a tangible form. Copyright for a published work can last for the life of the author plus 70 years, or 70 years from the year of publication. Copyright does not provide protection against the independent creation of a similar work. However, infringement action may be warranted if you can prove that a substantial part of a work was copied.

Designs

Design registrations protect the aesthetics of an article, including arguably distinctive features such as configuration, pattern and ornamentation. For a viable design registration, the design needs to impart ‘a different overall impression’ to any prior design known to the public before a design application was filed. Any alleged infringing product of a granted design right must be identical or ‘substantially similar in overall impression’ to the registered design.

Patents

Patents protect new and inventive developments, and the technical features of an invention. They can encompass new compounds or materials, methods of production and novel applications of new or known matter. A patent applicant must provide full disclosure of their invention, and carefully define their invention in a set of claims. Sufficient information needs to be provided in a patent specification that: a) allows a third party to put an invention into practice without the need for further invention, and b) supports the invention so that the scope of protection being sought (the ‘monopoly’) is plausible and commensurate with the actual technical contribution.

Multiple IP Rights

Each IP right does not exist in a vacuum and multiple IP rights may relate to a single innovative product to protect, amongst other aspects, its technical features (patent), aesthetics (design) and possibly branding (trade mark and/or copyright).

Summary

Due to the global variation in laws relating to the various forms of IP, obtaining IP assets can be complicated. In order to minimise costs and streamline processes to obtain protection, it is strongly recommended that you talk to an IP expert to navigate you through your various options.

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