Intellectual Property Fundamentals Ed Genocchio - Principal of Spruson & Ferguson - Mechanical Group Presentation to The Australian Technology Showcase

What is Intellectual Property? Patents * Designs * Trade marks Copyright Circuit Layouts, Plant Varieties, Trade Secrets Non-tangible assets that are transferable or tradeable: IP comprises 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, using, importing, insuring, selling or otherwise dispensing, or keeping a product for the purposes of any of the above It is incumbent on the patent owner to enforce their rights

Motivations For Patenting Commercial implications - Barrier to entry for competitors (price control) - Ability to license IP/cross license IP/sell or assign IP -Ability to sell/license individual embodiments of invention (eg. Products) - To recover costs associated with developing an invention and to maximise the benefits of that investment

What is Patentable? Virtually any new technical advance can be patented Must be an article, a substance, a process or method of manufacture having that technical advance Previously assumed unviable Previously unrecognised problem New combination of known elements New application with unexpected results

When to File a Patent Application File a patent application before disclosing the invention to any other parties 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 Seek advice before disclosing further developments after filing an application

Types of Patent Applications Provisional application (12 month lifetime) Complete application International PCT application There is no such thing as an ‘International Patent’

Some Requirements for a Valid Patent in Australia Patentable subject matter – Not: - Human beings and biological processes for their creation - Inventions contrary to law - Inventions generally inconvenient to the public; and - Artistic creations Novel (new) Inventive (not obvious) Sufficiently described in patent specification

Patent Searches Locates relevant ‘prior art’ to assess novelty or infringement from online patent databases Used to check on the activities of competitors - Watches Searches can be comprehensive but are not infallible 18 month ‘black hole’

10 Prosecution Timeline months 6 Opposition Deadline 01231~53 Priority Date ~12 Non-PCT Filing max Direction to Request Examination National Phase Entry Request Examination First Examiner’s Report Acceptance Patent Issues

Ownership of Inventions in Australia In general, persons making an inventive contribution to the claimed invention In the absence of a contrary agreement employers are entitled to inventions made by employees in the course of their employment – UWA v Gray Important to correctly name all inventors

Infringement Effectively any unauthorised commercial exploitation within Australia Enforceable only once patent granted Right to damages/account of profits backdated to date of publication

Assessing Infringement Must take every essential feature of at least one claim Contributory infringement Enforcement proceedings must be commenced within 5 years after an infringing act

Designs Temporary monopoly in the visual appearance of a product that precludes exploitation by other parties Protects features of shape, configuration, pattern or ornamentation No pre-registration examination Post-registration examination required prior to enforcement

Scope of Designs “Overall visual appearance of product” Not possible to explicitly restrict design to part of product More consideration given to features common with prior art/infringer than to differences Consideration given to features defined in Statement of Newness and Distinctiveness

Golden Rules File a patent application before disclosing the invention to any other parties Seek advice before disclosing further developments after filing an application

T: F: E: Edward Genocchio