IP (INTELLECTUAL PROPERTY)
A KEY TO ENGINEERING GROWTH
Anthony Cowle
B.E. (Elec)., F.I.P.T.A., Patent Attorney
Partner, Davies Collison Cave
acowle@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-driven
economy
– 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 in
global 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/general
community
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 INTELLECTUAL
PROPERTY (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, engineering
drawings, 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 no
registered IP rights
– Plant Breeders Rights
– Circuit Layout Rights
OBTAINING PATENT PROTECTION
– see a Patent Attorney before disclosing to others to identify
patentable inventions
– file a Provisional application (provides 12 months
International 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 PCT
application - within 12 months
– file overseas Designs applications / Trade Mark
applications - within six months
WHY SEEK IP RIGHTS?
– overview of how/why the Patent system came into
existence
– the grant of a Patent is a ‘reward’ to the Patent owner for
inventing and disclosing the invention
– a ‘commercial tool’ which may be used to maximise the
economic growth of a firm
IMPORTANCE OF IP RIGHTS TO GROWTH
– WIPO (World Intellectual Property Organisation)
– administers PCT International Patent Application system
– presently actively promoting importance of IP to
developing countries
– highlighting correlation :
– strong IP system = economic growth of countries
IMPORTANCE OF IP RIGHTS TO GROWTH
– strong IP laws = strong economies
–
eg: US, Japan, Europe
– recently strengthened IP laws = recently improved
economies
–
eg: Singapore, South Korea
– IP laws now being strengthened = increased growth now
occurring
–
e.g. China, India
IMPORTANCE OF IP RIGHTS TO GROWTH
– Unfortunately, many Australian Engineers often overlook
the fact that IP protection should be an integral part of a
company’s business strategy, and therefore find it difficult
to maintain competitiveness in the national/global economy
– In recent years, Australian academic institutions have
recognised that, by seeking Patent and other IP protection,
for University developed inventions, they are able to
licence or otherwise exploits rights for monetary returns,
which in turn can fund growth and further development for
the 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 from
what has been invented by the Patent owner
– the challenge is to turn the inventiveness and creativity
into 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 development
and aggressive marketing making it impossible for
competitors to copy in due time
IP AS A STRATEGIC TOOL
– for most engineering firms, considerable time and money is
expended 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 block
commercial activities
IP AS A STRATEGIC TOOL
∴ the key is to integrate Intellectual Property into a business
strategy
IP AS A STRATEGIC TOOL
– sometimes ideas developed may not be aligned with key
business strategies
– then consider selling or out-licensing the IP rights for
monetary returns
IP AS A STRATEGIC TOOL
– sometimes ideas developed by others are relevant to key
business strategies
– then consider buying or in-licensing the IP rights or
partnering or forming a business alliance to commercialise
innovations
IMPLEMENTING AN IP POLICY
– in order to operate effectively, the engineering manager
must be thoroughly involved in promoting the importance of
the company’s IP, and must be actively involved in
disseminating information about IP
– staff will only participate in company’s IP regime if they
receive encouragement, direction and acknowledgement
from management
IMPLEMENTING AN IP POLICY
– at commencement of employment, new staff should sign
Confidentiality and Assignment Agreements, confirming that
any and all IP developed during employment is assigned to
company (this is Australian Law, but doing this reinforces
the value and importance of IP to the company)
– staff should receive regular educational
seminars/workshops from the company’s IP advisers
– staff should be taught the company’s policy and procedures
for dealing with IP and how to identify and document new
inventions
– staff should be taught how to become aware of
competitor’s IP and how it may be used to spur on further
R&D within the company
MOTIVATING ENGINEERING STAFF TO
DISCLOSE 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, achieving
volume of sales
– promote publicly in organisation
– e.g. emails, staff functions
PROCESS FOR RECOGNISING AND
DISCLOSING IP INFORMATION
– educate engineering staff of Patent process so they understand
how to recognise inventions and when their idea can be
transposed 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 use
invention in company’s strategy
MONITOR COMPETITOR’S IP ACTIVITY
– patent documentation is a valuable source of information often
not 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 is
surprisingly 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 the
exclusivity of its products or services to ensure
competitiveness in marketplace
– it is imperative for engineering enterprises to have a
proactive IP regime to assist in the commercial success of
their business
THANK YOU
Contact:
Anthony J Cowle
Davies Collison Cave
Level 10, 10 Barrack Street
GPO Box 3876
Sydney New South Wales 2000
Phone: 02) 9262 2611
Fax: 02) 9262 1080
Email: acowle@davies.com.au
Website: www.davies.com.au