 Final Year Engineering Students May 2004 Soozy J Smith So you think you have an Idea?

 represents the property of your mind or intellect- also known as your proprietary knowledge INTELLECTUAL PROPERTY

IF YOU develop a computer programme develop a computer programme create a work of art create a work of art write a novel or article write a novel or article design a product e.g. chair design a product e.g. chair develop a vaccine develop a vaccine breed a new plant species breed a new plant species you create: INTELLECTUAL PROPERTY

WHAT IS INTELLECTUAL PROPERTY? Patents Patents Copyright Copyright Trademarks Trademarks Registered Designs Registered Designs Plant Variety Plant Variety Know How Know How Trade Secrets (know-how, confidential info) Trade Secrets (know-how, confidential info)

COPYRIGHT It is the right to copy and this is vested in the owner and no- one else. It is the right to copy and this is vested in the owner and no- one else. Most evasive area of IP. Most evasive area of IP. Subsists in most cases without the need to file, register or deposit anything. Subsists in most cases without the need to file, register or deposit anything. Must mark the work with copyright label (© 2003 Smith) Must mark the work with copyright label (© 2003 Smith) Governed by international treaties. Governed by international treaties. Recently been extended from 50 to 70 years after author’s death in some jurisdictions. Recently been extended from 50 to 70 years after author’s death in some jurisdictions. Birth of multimedia has resulted in a large increase in copyright licenses. Birth of multimedia has resulted in a large increase in copyright licenses.

TRADEMARK A sign e.g. CocaCola A sign e.g. CocaCola Cannot be descriptive, geographical or a surname. Cannot be descriptive, geographical or a surname. Establishing and maintaining is not easy. Establishing and maintaining is not easy. No single treaty that provides uniform treatment or trademarks throughout the world No single treaty that provides uniform treatment or trademarks throughout the world Trademark programme must be country by country. Trademark programme must be country by country.

PATENT - Comes from the Latin ‘patere’ meaning to be open Provides the right to prevent others from making, selling or using your invention. Provides the right to prevent others from making, selling or using your invention. Issued by the Government of a country through its Patent Office (IPAustralia). Issued by the Government of a country through its Patent Office (IPAustralia). All countries in the world (with few exceptions) have a patent system. All countries in the world (with few exceptions) have a patent system. International treaties exist. International treaties exist. Process of filing by in large same throughout the world. Process of filing by in large same throughout the world. Application extensively reviewed and subject to satisfying the requirements a patent will be granted. Application extensively reviewed and subject to satisfying the requirements a patent will be granted. Prevents others only in country where granted. Prevents others only in country where granted.

WHY PATENT AN INVENTION ? To capture the technology. To capture the technology. An asset is produced. An asset is produced. The asset can then be traded. The asset can then be traded. The asset can then be commercialised. The asset can then be commercialised. It provides a strong proprietary position to help attract finance to develop and commercialise the technology. It provides a strong proprietary position to help attract finance to develop and commercialise the technology. Patents also provide companies and inventors with recognition in the field. Patents also provide companies and inventors with recognition in the field.

PATENT OR PUBLISH? You CAN do both. You CAN do both. Must patent first then publish. Must patent first then publish. Longer publication withheld the better. Longer publication withheld the better. Patents are confidential for at least 18 months. This permits the inventor to push on and have an advantage over would-be competitors. Patents are confidential for at least 18 months. This permits the inventor to push on and have an advantage over would-be competitors.

OWNERSHIP OF INTELLECTUAL PROPERTY Two exceptions being: Journalists Journalists Photographers Photographers As a general rule, ‘an employer will claim ownership of intellectual property developed in the course of your employment’.

SO YOU THINK YOU HAVE AN IDEA! Notify an appropriate person. At the University it is the Deputy Vice Chancellor (Research), companies more than likely will have a patent counsel. Notify an appropriate person. At the University it is the Deputy Vice Chancellor (Research), companies more than likely will have a patent counsel. The IP is assessed. This may include: The IP is assessed. This may include:  extensive discussions  assessment by patent attorneys  assessment (under confidentiality) by industry experts. Decision to protect or not and what type of protection. Decision to protect or not and what type of protection.

CRITERIA THAT NEED TO BE MET FOR A PATENT TO BE GRANTED Utility. Utility. Novel. Novel. Inventive step. Inventive step. Adequate description. Adequate description.

WHERE TO FILE? Given that it is expensive to file need to be selective. Given that it is expensive to file need to be selective. Most common are the G7 countries: Most common are the G7 countries:  Japan  USA  Germany  UK  France  Italy  Netherlands

NOTEWORTHY DATE Incremental inventions often follow the first filing and if these are to be patented consideration should be given to filing these prior to publication of the PCT. Incremental inventions often follow the first filing and if these are to be patented consideration should be given to filing these prior to publication of the PCT. Publication of the PCT occurs 18 months from priority date. That is anybody can access your patent as lodged. Publication of the PCT occurs 18 months from priority date. That is anybody can access your patent as lodged.

DIFFERENCES BETWEEN USA AND WORLD First to invent vs first to file. First to invent vs first to file. One year grace period / Australia introduced this in One year grace period / Australia introduced this in Confidentiality until granted. Confidentiality until granted. Now agree to the rest of the world being able to produce evidence of first to invent. Now agree to the rest of the world being able to produce evidence of first to invent.

COMMERCIALISATION  Licence:non-exclusive versus exclusive  Spin-Off:Establishment of a company

Return on Investment  Up front fee: A one off payment made to secure the licence  Royalty: % of sales (need to define “sales”)  Milestone: Payments made when regulatory approvals granted  Most licences are a combination of the above

Examples of Successful Patents Cochlear’s Bionic Ear  is a device designed to help the hearing impaired and the profoundly deaf who are unable to benefit from traditional hearing aids.  used by over 10,000 people world wide  Cochlear Pty Ltd hold over 180 patents in 7 countries  The University of Melbourne & the Commonwealth hold patents covering early research which are licensed to Cochlear.  Manufacturing of the Cochlear implant is done entirely in Australia with exports making up 95% of their sales.  The University and the Commonwealth have earned over $8 million in royalties from their intellectual Property.

Examples of Successful Patents The Jameson cell  A bubble flotation apparatus which operates within a column to separate particles  Licenced to MIM and Jetflote Australia Pty Ltd  Royalties of $1.4 million received by TUNRA over past 9 years

Useful Web Sites   

INVENTION/INNOVATION-THE SAME OR DIFFERENT?  Invention: a novel idea which may or may not be commercial  Innovation: taking an invention and making it commercially viable  Rule of thumb:Invention$1.00 Development $10.00 Marketing$100.00