Interview:
Protecting your business with patents and trademarks.
By Stuart Ayling
Interview with Mr. Jaime Massang,
Managing Partner of PIPERS Patent & Trade Mark Attorneys, in Brisbane Australia.
[July
2006: Also read this separate report on trade mark tips from Inside
Retailing]
I caught up with Jaime to
discuss the importance of protecting Intellectual Property (IP) and new
concepts. Jaime heads the Brisbane office of PIPERS, an international firm
of IP law specialists who provide pre-purchase audits of intellectual property, advice on licensing, assignments and transfer of
IP rights.
Stuart Ayling: When should someone think about protecting their idea or product with a patent?
Jaime Massang: Something should be patented when the product or process is both novel and inventive and has the possibility of being able to be
commercialised.
S.A: Are there different types of patents? What are they for?
J.M: In Australia there are two types of patents.
The first is a 'standard' patent which has a term of 20 years (extendable to 25 years in certain cases such as pharmaceutical procedures and products) and allows an unlimited number of claims. Standard patents are for more substantial inventions and undergo an examination process for novelty and inventive step before being granted.
The other type of patent is the 'innovation' patent which is directed to less substantial inventions such as improvements to existing products or processes. Innovation patents have a term of 8 years but are limited to five claims and do not undergo an examination process. The consequence of this is that if an Innovation patent is to be enforced, post grant examination and certification must then be undertaken.
Australia also has a provisional patent application system which provides the
inventor with a maximum of 12 months from the date of application to explore the commercial potential of the invention and to make improvements to the invention before having to lodge either a standard or innovation patent, convention applications in overseas countries or to make an international application also known as a Patent Corporation Treaty (PCT) application.
S.A: Could you outline the steps involved in getting a patent approved? What are the key requirements?
J.M: It's most important not to disclose the inventive concept to anyone before patenting the invention.
Then get an expert in the field to draft a specification and remember: "What is not claimed is disclaimed". File the application before selling anything to anyone. Have people to whom the invention is disclosed after filing the application, sign a confidentiality agreement.
S.A: Some people believe patents are too expensive to obtain. What do you say to that?
J.M: How much in monetary terms is the invention worth to you? In most cases the patenting cost proves to be a very small and almost insignificant cost when compared to the actual return on investment. Importantly, without patent protection the invention is available to anyone who wishes to exploit the idea.
S.A: Are there any one or two main points you usually stress with clients regarding their patent application?
J.M: Yes...File the application before selling or disclosing anything to anyone.
And have people to whom the invention is disclosed after filing the application sign confidentiality agreements.
S.A: PIPERS also handle trademark applications. How does a trademark protect a business?
J.M: A common misconception is that company name and business name registration confers proprietary rights in the name. But it does nothing of the sort.
If a business name is applied to goods or used to indicate services, it is being used as a trade mark and a separate registration as a trade mark should be considered.
A trade mark has to be registered before the
proprietor can enforce the exclusive right under the Trade Marks Act to prevent that mark
from being used by any other trader in relation to the specific goods or services.
The proprietor of a registered trade mark has the exclusive right under the Trade Marks Act to apply that mark in relation to the goods or the services of the registration throughout Australia.
S.A: Does it matter if the business has been using the name or logo already without having applied for a trademark?
J.M: No, however they will not be able to enforce their trade mark rights under the Trade Marks legislation if the mark or logo has not been registered. Enforcement of a so called "common law" mark is a costly affair and requires establishment of reputation to be successful.
S.A: Do you have any other recommendations or comments about patents or trademarks?
J.M: Patents, trade marks and design registrations are fundamental to any commercial exploitation of intellectual property. It is essential that they be professionally drafted so that they can achieve their full commercial potential when marketed. It must be remembered that the intellectual property will be scrutinised by any potential purchaser for any deficiencies.
New trends in intellectual property protection include the emergence of e-commerce and business system patents, the recognition of individual rights to intellectual property in the academic and consultancy professions, and the rise of moral rights attached to creative works of art in the field of copyright.
Link:
PIPERS Patent & Trade Mark Attorneys
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