Protecting New Ideas Patents, Designs Trademarks by mfv20130

VIEWS: 6 PAGES: 41

									                             Protecting New Ideas:
                             Patents, Designs &
        Bill McFarlane       Trademarks
   bill@madderns.com.au


            What are they and how do they work




7/04/2010                                            1
What is a Patent Attorney?


•   All patent attorneys in Australia have a technical
    qualification (usually BE or BSc and many have post-
    graduate degrees).

•   They also have post-graduate qualifications in Patent,
    Trademark & Designs Law (Master of Intellectual
    Property).




                                                             2
What are patents, trade marks and designs?



•   They are Intellectual Property rights (IP) created and
    awarded by the Government that provide ownership
    and control of new ideas ,marks and designs.

•   For patents, designs and trade marks they provide a
    monopoly that can only be exercised by their owner. This
    type of monopoly is one of the few accepted forms of
    monopoly in business even under the Trade Practices Act

•   A person or company that copies a registered/granted
    patent, trade mark or design can be taken to court. If
    successfully litigated the infringer pays damages or lost
    profits plus a percentage of the cost of the matter before
    the court (typically 40-60%)


                                                                 3
How to exploit your IP


•   Attract investment capital and other support

•   Licence technology (territorial rights can apply)

•   Sell/assign just like a real property right

•   You or your company may/will have the ability to
    maintain an edge over your competitors if your IP
    protects the commercially valuable difference between
    your product and that of the competition

•   Having registrable IP rights which are open to public
    inspection lets it be known that you have certain IP rights
    and it does not harm to give the impression that those
    right will be enforced
                                                                  4
                What protection is available?



•   Patents                 )
•   Trade Marks             )
•   Designs                 ) Granted/Registered IP Rights
•   Circuit Layout Rights   )
•   Plant Variety Rights    )

•   Copyright
•   Trade Secrets and Confidential Information




                                                             5
      What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                      6
            What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                            7
            What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                            8
              What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                              9
            What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                            10
            What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                            11
            What protection is available?



•   Patents
•   Trade Marks
•   Designs
•   Copyright
•   Circuit Layout Rights
•   Plant Variety Rights
•   Trade Secrets and
    Confidential Information




                                            12
Patents: Important Facts



•   It is a property (IP) that can be sold or licensed.

•   Provides entitlement to sue for infringement.

•   Is of limited duration (20 yrs) for a standard patent,
    (8 yrs) for and Innovation patent;
     – DESIGNS (10 yrs) for designs,
     – TRADE MARKS forever but needs to be renewed every
       (10 yrs)
     – Copyright last a maximum of 75 years beyond the death
       of the author


•   Does not guarantee commercial success.

                                                               13
Patents: What is Patentable?

•   Patentable subject matter:
    A new product or process with commercial application and
    having commercial economic value.
     – A) Manner of new manufacture
     – B) Must be new (NOVEL) - worldwide test
          • Not published anywhere prior to the filing date of your
            patent
          • Not used in Australia
     – C) There must be an “inventive step”.
       There is no inventive step if it obvious to a “person skilled in the art”
       Applies to standard 20 year maximum life patents
Or an “innovative step” for Innovation patents which only last
   8 years
   -   There must be A) and B) above, but, when compared to published
    documents and the common general knowledge, the innovation must
    make a contribution to the working of the invention

                                                                                   14
Patents: Search before filing


•   Don’t “reinvent the wheel”

•   Commercial Patent Searching Costs ($2,500-$7,000 and
    beyond)
•   Search Patent databases
     – es.espacenet.com/espacenet/
         • broad coverage
     – www.uspto.gov
         • US patents only
         • Alternative is http://www.google.com.au/patents
•   Search Journals and the Internet generally
     – www.business.com
     – www.google.com.au
•   Use patent information to monitor competitor activity


                                                             15
 America’s Cup 1983



• “Secret” keel of
  Australia II

• Efforts to find out
  about keel

• They could have
  ...
                        16
  America’s Cup 1983



• …searched the patent
  records!!!!!!!!!!!!!!!!!!!

• Inventor: Ben Lexcen

• “…Yacht keel with fins near
  tip…”




                                17
Wind propelled apparatus



• Windsurfer Patent AU
  patent 454516
• Priority Date:
  27 - Mar - 1968

• Filed Date:
  27 - Mar - 1969

• Assigned to:
  Windsurfing
  International Inc.

  Exclusive license to:
  Sailboards Aust P/L      18
Popular Science Magazine



• August 1965

• Disclosed “free sail”
  concept




                           19
Patents: before filing (cont’d)



• Do NOT sell or offer to sell before filing.

• Do NOT publish before filing.

• Do conduct a commercial viability assessment.

• Do understand the timeframe and costs associated
  with patenting.




                                                     20
Time Vs Cost Standard Patent                     (rough $ guide only)




  0 yrs             Provisional application                $3000 -$5000

  1 yr              Complete application                   +approx $12,000
                    International application (PCT)
                    or Innovation Patent                   +approx $3500

  2.5 yrs           National Applications                  +approx $40,000
                    (AU, US, NZ, EP (regional) & JP)       or $5,000 per
                                                           country on avg.



  5 yrs             Examination and Grant                 +approx $40,000
                                                          or approx $5,000
                                                          per country
     For coverage in AU, US, NZ, Europe and JP TOTAL COST approx $100,000
                                                                           21
                      Patent Procedure in Brief


It could be 2 to 3 years after filing that this process begins

     •   Request examination
     •   Examination in Canberra or Melbourne
     •   respond to/amend in light of examination
     •   acceptance
     •   opposition (pre-grant and some post-grant)
     •   Grant
6-21
months
     • renewals
     • revocation action possible (to attack validity of patent in
       court)
                                                                     22
           Time Vs Cost (rough $ guide only)
          FOR AN INNOVATION PATENT

0 yrs          Innovation patent application       $2000.00+

1-2 mths       Grant of application without examination
                                                   - no cost
               Can not threaten to sue
               Only advise others of its existence

2 yrs          Renewal yearly thereafter           ~$150/pa

0-8 yrs        Request to Certify by you or others $600
               (Examination Report issues)
               If a response is required           $500+

up to 8 yrs maximum    Certified and enforceable

                                                               23
             Structure of a Patent Document



•   Description                   Claims

•   technical description of      define legal monopoly of
•   invention                        invention


•   must include enough detail    claims can be to
    to                                Product, or
•   allow skilled reader to re-       Method/Process, or
    create                            both
•   invention

•   diagrams


                                                             24
                  Who owns a new idea?



• The inventor is the owner, unless the inventor is an
  employee and has assigned their rights

• Your business plan must show how you derive
  rights from the inventor or designer in the case of
  a design or an author in the case of copyright
  works

• Seek the advice of a solicitor skilled in this area of
  the law to make sure the contracts you use are
  doing what they should in relation to IP matters.




                                                           25
             Alternatives to Patenting




• Keep secret if possible
          – in electronics or software, use an architecture
            which is not easily reverse-engineered
          – strict confidentiality agreements within company
            and with contractors

• just get in first and obtain market share and support the
  product with a catchy trade mark

• rely on copyright in code (limited)


                                                              26
Designs



• A design is a right obtained by registration for
  product
• A design means the overall appearance of the
  product resulting from one or more visual features
  of the product.
• The design must be new and distinctive
• A design protects against products which are
  substantially similar in overall impression



• IT DOES NOT PROTECT THE FUNCTION OF THE
  ARTICLE
                                                       27
Designs



  – Examples

     •   iron (but not the Auto-Switch Off function)
     •   kettle
     •   rice cooker
     •   electrical wall socket
     •   electrical plug




                                                       28
Designs



  – Examples




               29
Designs


  •   Term 10 years
  •   Application comprises
       – Line drawings of article
            • FRONT, BACK, TOP, BOTTOM,SIDES and PERSPECTIVE
              VIEW
            • Statement of newness and originality
  •   Search before application (optional but recommended)
  •   Both the Australian design register www.ipaustralia.gov.au and
      the US register www.uspto.gov are searchable for the article.
      In the USA a design registration will have a patent number
      prefixed by the letter D which denotes a Design patent



  9 months to registration without examination
                                                                       30
Trade Marks




              31
Trade Marks


• Used to identify the origin of goods &/or
  services.

• Advantages for both TM owner and
  consumer.

• Will become a very valuable asset & unlike
  patents are renewable indefinitely.

• Not essential to register a TM - but Reg
  TM gives rights which are easier to
  enforce and license.

• Can comprise a word, logo, shape, sound,
  smell and an aspect of packaging.            32
Trade Marks



 SHAPE TRADE MARK
 Coca-Cola has 3 Registered shape marks and 5
 Pending
 Coca-Cola TM 767355 Coca-Cola TM723775 Coca-Cola TM631053




                                                         33
Trade Marks



  SMELL,SCENT TRADE MARK
     TM Application 821444 (lapsed)
       The trade mark comprises the scent of COFFEE
       fragrance for self tan lotions and hair lotions, sun
       preparations.
    Trade Mark : 1241420
      for the scent of Eucalyptus
      Radiata in respect of Golf Tees in
      the name of E-Concierge Australia Pty Ltd


                                                              34
Trade Marks



• Sound Trade Mark
  – Mc Cain Foods (Aust) Pty Ltd TM
    no. 759707
     • AH MCCAIN (PING) YOU'VE DONE IT
       AGAIN




                                         35
Trade Marks



• Select a trade mark that will distinguish you goods
  or services from other companies.

• Examples of marks that do not and can not
  distinguish your goods or services:
    – Easy Wipe
    – Barossa Valley
    – Smith

      because these are terms that are likely to be used by
      other traders in the normal course of their trade.



                                                              36
Examples of distinctive Trade Marks



• Invented words:
     Wheelie Sharp
     Kodak
• Suggestive words:
     Sunsilk
• Logos

                                      37
What do you do before using a Trade Mark?



• Search the trade mark register, company and
  business name registers as well as the
  Internet before USING a trade mark.
   – Australian Trade Mark register on-line
       • http://pericles.ipaustralia.gov.au/atmos
         s/Falcon_Users_Cookies.Define_User
       • www.ipaustralia.gov.au
   – United States Trade Mark register
       • www.uspto.gov
           – TESS look for this database for
             trademark searching


                                                    38
    Trade Marks: process and cost

•  File application
    – Rough Cost (one mark in one class)
         • As done with the assistance of a Trade Mark
           Attorney
         • Official Fees + GTS are included in costs below
         $710 for the application
• Examination
         $200-$500 for the prosecution
• Opposition period
         (3 months from date of acceptance)
• Registration (payable within 6 months of date of
   acceptance
         $460 for ten years of registration
         Overseas filings – via country by country, regional,
           Madrid protocol best within 6 months of filing
           date
 9 months to registration at best generally 12 months
                                                                39
 Conclusion: What needs to be in your plan?


• An evaluation of the novelty of your idea
  and/or product; conduct a search of patents,
  designs and trade marks. Identify if other
  forms of protection that are applicable
   – The search does not need to be done by
      an attorney
   – Provide a realistic cost for application/s and
      maintenance in the short term
• Establish proof that there is clear title to
  ownership or control to any IP and make
  mention of who owns what and how you
  intended to deal with ownership
• Show how the IP is to be used in the exit
  strategy
• DO NOT BE AFRAID TO ASK QUESTIONS                   40
Protecting New Ideas:
Patents, Designs & Trademarks

What are they and how do they
work




Bill McFarlane Partner
Madderns Patent & Trade Mark
    Attorneys
bill.mcfarlane@madderns.com.au
www.madderns.com.au




7/04/2010                        41

								
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