Julian Magarey, Associate Spruson & Ferguson Presentation to The Australian Technology Showcase 18 May 2011 INTELLECTUAL PROPERTY FUNDAMENTALS

What is Intellectual Property?  Non-tangible assets that are transferable or tradeable: »Patents »Designs »Trade marks »Copyright »Circuit Layouts, Plant Varieties »Trade Secrets  Arise from some kind of creative activity: invention, design, authoring, composition, etc.  Can exist without taking any steps to “register”  Valuable strategic and financial assets for every organisation

Patents  Temporary monopoly in a technological innovation that precludes exploitation by other parties  Typically 20 year term – Pharmaceutical extension of up to 5 years available  Protects functional or technical features – usually a practical application of a discovery or idea  Exploitation includes: making, hiring, selling or otherwise disposing, using, importing, or keeping a product for the purposes of one of the above  Patent owner must enforce those rights

Motivations for Patenting  Commercial benefits »Prevent copying by competitors Recover costs associated with developing an invention and to maximise the returns on that investment »License / cross license / sell / assign »Attract investment »Freedom to operate  Permanent credit for inventorship

What is Patentable  Virtually any new technical advance can be patented  Must be an article, a substance, a system, or a process containing that technical advance  Can be a interrelated combination of known elements or steps  Cannot be: »Human being or biological process for their generation »Contrary to law »Artistic work (e.g. painting, poem) »“Pure” business method (see later)  Can be software (see later)

When to File a Patent Application  Before disclosing the invention to any other parties »Self-publication can invalidate patent, here and overseas  When sufficiently developed to enable an adequate description of the invention »Not necessary to have worked out every detail »A certain amount of prediction is part of most patent applications  After further developments of an existing application »Can join or “cognate” a new application with an existing application

Types of Patent Applications  Provisional application (12 month lifetime) »Placeholder until invention fully developed  Complete application (20 year term)  Innovation application (8 year term)  International (PCT) application (30 month lifetime) »Placeholder for overseas applications until commercial needs are clearer There is no such thing as an ‘International Patent’!

Some Requirements For a Valid Patent in Australia  Novel (new)  Inventive (not obvious) or Innovative Step (working contribution) »New application of old device with unexpected results »New device previously assumed unviable »Solution to Previously unrecognised problem  Sufficiently described in a patent specification to enable a skilled person to make the invention  Ownership is correct (see later)