IP (INTELLECTUAL PROPERTY)A KEY TO ENGINEERING GROWTH

Anthony CowleB.E. (Elec)., F.I.P.T.A., Patent Attorney

Partner, Davies Collison Caveacowle@davies.com.au

IP - A KEY TO ENGINEERING GROWTH

Small-to-Medium sized Enterprises (SMEs)

– form the backbone of most economics

– the driving force behind innovations and knowledge-driveneconomy

– innovative capacity not always fully exploited

– often under-utilise IP systems

– general lack of awareness of IP

IP - A KEY TO ENGINEERING GROWTH

World Intellectual Property Office (WIPO)

– administers the International Patent Application system

– works with governments to develop policies and strategies

Australian Government

– SMEs need to compete in International marketplace inglobal economy

– provides R&D grants, COMT, EMDG

– reviewing IP legislation to focus on IP needs to SMEs

IP - A KEY TO ENGINEERING GROWTH

Registered Patent Attorneys

– technical qualification

– UTS qualifications

– practical training

IP - A KEY TO ENGINEERING GROWTH

Australian Engineers

– too modest?

– under-estimate their capabilities and inventiveness?

– need to recognise and protect their IP

IP - A KEY TO ENGINEERING GROWTH

Protection of IP will:

– contribute to growth of Engineering businesses

– improve competitiveness in International marketplace

– increase profitability of Engineering firms

– improve the profile of Engineers in the business/generalcommunity

IP - A KEY TO ENGINEERING GROWTH

– overview of IP rights

– how to implement an IP policy in an Engineering business

– other ways of Engineers using IP systems

OVERVIEW OF INTELLECTUALPROPERTY (IP) RIGHTS

– Patents

– Trade Marks

– Registered Designs

– Copyright

– etc.

All can provide an exclusive right to the creator/inventor

All can be bought, sold, licensed

EXAMPLES OF (IP) RIGHTS

PATENTS

– protect the way things work

– cover products, methods or processes

– exclusive right to exploit invention for term of Patent

– requirements– novel (new)– inventive (not obvious)– useful

– Standard Patent - 20 years - requires ‘inventive step’

– Innovation Patent - 8 years - requires ‘innovative step’

EXAMPLE OF PATENTABLE PRODUCTS/METHODS

REGISTERED DESIGNS

– protect the appearance of an article, i.e. shape or pattern

– exclusive right to exploit article for term of Design

– requirements– new– distinctive

– term 10 years

Note: Designs Act 2003 supersedes the Designs Act 1906

EXAMPLES OF REGISTERED DESIGNS

TRADE MARKS

– protect a name, logo, aspect of packaging, shape, scent,colour, sound, or any combination of these

– must be distinctive - avoid descriptive words

– Registered/Unregistered Trade Marks

– term-indefinite (renewal - 10 year terms)

– may represent the greatest asset of a company

– proper use– distinguish from other text– indicate status by ® or TM– identify as an adjective - e.g. Hoover Vacuum Cleaner– don’t allow to become generic - e.g. escalator, esky, linoleum

EXAMPLES OF REGISTERED TRADE MARKS

COPYRIGHT

– protects original literary, dramatic, musical, artistic works

– includes brochures, instruction manuals, engineeringdrawings, architects plans, etc.

– no registration - automatically exist upon creation

– term - life of author plus 70 years

OTHER IP RIGHTS

– Domain Names - address on Internet

– Common Law Rights - providing limited protection if noregistered IP rights

– Plant Breeders Rights

– Circuit Layout Rights

OBTAINING PATENT PROTECTION

– see a Patent Attorney before disclosing to others to identifypatentable inventions

– file a Provisional application (provides 12 monthsInternational protection)

– start commercialising invention

– determine countries in which to protect invention, e.g.major markets

OVERSEAS IP PROTECTION

– Australia party to ‘Paris’ Convention

– file overseas Patent applications or International PCTapplication - within 12 months

– file overseas Designs applications / Trade Markapplications - within six months

WHY SEEK IP RIGHTS?

– overview of how/why the Patent system came intoexistence

– the grant of a Patent is a ‘reward’ to the Patent owner forinventing and disclosing the invention

– a ‘commercial tool’ which may be used to maximise theeconomic growth of a firm

– WIPO (World Intellectual Property Organisation)

– administers PCT International Patent Application system

– presently actively promoting importance of IP todeveloping countries

– highlighting correlation :

– strong IP system = economic growth of countries

IMPORTANCE OF IP RIGHTS TO GROWTH

IMPORTANCE OF IP RIGHTS TO GROWTH

– strong IP laws = strong economies

– eg: US, Japan, Europe

– recently strengthened IP laws = recently improvedeconomies

– eg: Singapore, South Korea

– IP laws now being strengthened = increased growth nowoccurring

– e.g. China, India

IMPORTANCE OF IP RIGHTS TO GROWTH

– Unfortunately, many Australian Engineers often overlookthe fact that IP protection should be an integral part of acompany’s business strategy, and therefore find it difficultto maintain competitiveness in the national/global economy

– In recent years, Australian academic institutions haverecognised that, by seeking Patent and other IP protection,for University developed inventions, they are able tolicence or otherwise exploits rights for monetary returns,which in turn can fund growth and further development forthe benefit of the institution

IP AS A STRATEGIC TOOL

– having IP rights, as such, does not grant business success

– having a Patent does not guarantee an income stream

– Patents merely prevent someone else from profiting fromwhat has been invented by the Patent owner

– the challenge is to turn the inventiveness and creativityinto the sales of goods and services

IP AS A STRATEGIC TOOL

– sometimes it is prudent not to Patent

– it may be better to keep it secret

– it may be better to progress with fast product developmentand aggressive marketing making it impossible forcompetitors to copy in due time

IP AS A STRATEGIC TOOL

– for most engineering firms, considerable time and money isexpended in R&D

– in these cases, failure to obtain IP rights can be risky

– opportunities to secure income are lost

– resources for R&D are not recouped

– Patents may be obtained by competitors to blockcommercial activities

IP AS A STRATEGIC TOOL

∴ the key is to integrate Intellectual Property into a businessstrategy

IP AS A STRATEGIC TOOL

– sometimes ideas developed may not be aligned with keybusiness strategies

– then consider selling or out-licensing the IP rights formonetary returns

IP AS A STRATEGIC TOOL

– sometimes ideas developed by others are relevant to keybusiness strategies

– then consider buying or in-licensing the IP rights orpartnering or forming a business alliance to commercialiseinnovations

IMPLEMENTING AN IP POLICY

– in order to operate effectively, the engineering managermust be thoroughly involved in promoting the importance ofthe company’s IP, and must be actively involved indisseminating information about IP

– staff will only participate in company’s IP regime if theyreceive encouragement, direction and acknowledgementfrom management

IMPLEMENTING AN IP POLICY

– at commencement of employment, new staff should signConfidentiality and Assignment Agreements, confirming thatany and all IP developed during employment is assigned tocompany (this is Australian Law, but doing this reinforcesthe value and importance of IP to the company)

– staff should receive regular educationalseminars/workshops from the company’s IP advisers

– staff should be taught the company’s policy and proceduresfor dealing with IP and how to identify and document newinventions

– staff should be taught how to become aware ofcompetitor’s IP and how it may be used to spur on furtherR&D within the company

MOTIVATING ENGINEERING STAFF TODISCLOSE IP INFORMATION

– small gift of appreciation or monetary rewards

– do this at relevant times

– e.g. disclosure of invention, filing Patent application,grant of Patent, release of product to market, achievingvolume of sales

– promote publicly in organisation

– e.g. emails, staff functions

PROCESS FOR RECOGNISING ANDDISCLOSING IP INFORMATION

– educate engineering staff of Patent process so they understandhow to recognise inventions and when their idea can betransposed into Patent claims

– use Invention Disclosure (ID) form

– helps inventor focus on commercial applications

– helps management assess idea

– helps Patent Attorney draft Patent application

– records important dates - may be useful later

– ID form triggers discussion of a strategic nature as to how to useinvention in company’s strategy

MONITOR COMPETITOR’S IP ACTIVITY

– patent documentation is a valuable source of information oftennot divulged in other forms of literature

– this information can be used to support and spur on R&D activities

– despite the existence of this vast source of information, its use issurprisingly low, particularly amongst SMES

– publication of Patents - 18 months from filing

– inexpensive & easy (name, class, keywords),

– www.uspto.gov

– www.european-patent-office.org

– www.ipaustralia.gov.au

CONCLUSION

– the commercial success of any business relies on theexclusivity of its products or services to ensurecompetitiveness in marketplace

– it is imperative for engineering enterprises to have aproactive IP regime to assist in the commercial success oftheir business

THANK YOU

Contact:Anthony J CowleDavies Collison Cave

Level 10, 10 Barrack StreetGPO Box 3876Sydney New South Wales 2000

Phone: 02) 9262 2611Fax: 02) 9262 1080Email: acowle@davies.com.auWebsite: www.davies.com.au