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 programmedevelop a computer programme

create a work of artcreate a work of art

write a novel or articlewrite a novel or article

design a product e.g. chairdesign a product e.g. chair

develop a vaccinedevelop a vaccine

breed a new plant speciesbreed a new plant species

you create:

INTELLECTUAL PROPERTY

WHAT IS INTELLECTUAL PROPERTY? PatentsPatents

CopyrightCopyright

TrademarksTrademarks

Registered DesignsRegistered Designs

Plant VarietyPlant Variety

Know HowKnow 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-It is the right to copy and this is vested in the owner and no-

one else.one else.

Most evasive area of IP.Most evasive area of IP.

Subsists in most cases without the need to file, register or Subsists in most cases without the need to file, register or deposit anything.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 Recently been extended from 50 to 70 years after author’s death in some jurisdictions.death in some jurisdictions.

Birth of multimedia has resulted in a large increase in Birth of multimedia has resulted in a large increase in copyright licenses.copyright licenses.

TRADEMARK

A sign e.g. CocaColaA 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 No single treaty that provides uniform treatment or trademarks throughout the worldtrademarks 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 Provides the right to prevent others from making, selling or

using your invention.using your invention.

Issued by the Government of a country through its Patent Issued by the Government of a country through its Patent Office (IPAustralia).Office (IPAustralia).

All countries in the world (with few exceptions) have a patent All countries in the world (with few exceptions) have a patent system.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 Application extensively reviewed and subject to satisfying the requirements a patent will be granted.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 It provides a strong proprietary position to help attract finance to develop and commercialise the technology.finance to develop and commercialise the technology.

Patents also provide companies and inventors with Patents also provide companies and inventors with recognition in the field.recognition in the field.

PATENT OR PUBLISH? You You CANCAN do both. 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. Patents are confidential for at least 18 months. This permits the inventor to push on and have an This permits the inventor to push on and have an advantage over would-be competitors.advantage over would-be competitors.

OWNERSHIP OF INTELLECTUAL PROPERTY

Two exceptions being:Two exceptions being:

JournalistsJournalists

PhotographersPhotographers

As a general rule, ‘an employer will claim ownership of intellectual

property developed in the course of your employment’.

SO YOU THINK YOU HAVEAN IDEA! Notify an appropriate person. At the University it is the Notify an appropriate person. At the University it is the

Deputy Vice Chancellor (Research), companies more than Deputy Vice Chancellor (Research), companies more than likely will have a patent counsel.likely will have a patent counsel.

The IP is assessed. This may include:The IP is assessed. This may include:

extensive discussionsextensive discussions

assessment by patent attorneysassessment by patent attorneys

assessment (under confidentiality) by industry experts.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 Given that it is expensive to file need to be

selective.selective.

Most common are the G7 countries:Most common are the G7 countries:

JapanJapan

USAUSA

GermanyGermany

UKUK

FranceFrance

ItalyItaly

NetherlandsNetherlands

NOTEWORTHY DATE Incremental inventions often follow the first filing Incremental inventions often follow the first filing

and if these are to be patented consideration and if these are to be patented consideration

should be given to filing these prior to publication should be given to filing these prior to publication

of the PCT.of the PCT.

Publication of the PCT occurs 18 months from Publication of the PCT occurs 18 months from

priority date. That is anybody can access your priority date. That is anybody can access your

patent as lodged.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 One year grace period / Australia introduced this in 2002.in 2002.

Confidentiality until granted.Confidentiality until granted.

Now agree to the rest of the world being able to Now agree to the rest of the world being able to produce evidence of first to invent.produce evidence of first to invent.

COMMERCIALISATION

Licence:Licence: non-exclusive versus exclusivenon-exclusive versus exclusive

Spin-Off:Spin-Off: Establishment of a companyEstablishment of a company

Return on Investment

Up front fee: A one off payment made to secure Up front fee: A one off payment made to secure the licencethe licence

Royalty: % of sales (need to define “sales”)Royalty: % of sales (need to define “sales”)

Milestone: Payments made when regulatory Milestone: Payments made when regulatory approvals grantedapprovals granted

Most licences are a combination of the aboveMost licences are a combination of the above

Examples of Successful Patents

Cochlear’s Bionic EarCochlear’s Bionic Ear is a device designed to help the hearing impaired and the is a device designed to help the hearing impaired and the

profoundly deaf who are unable to benefit from traditional profoundly deaf who are unable to benefit from traditional hearing aids. hearing aids.

used by over 10,000 people world wideused by over 10,000 people world wide Cochlear Pty Ltd hold over 180 patents in 7 countriesCochlear Pty Ltd hold over 180 patents in 7 countries The University of Melbourne & the Commonwealth hold The University of Melbourne & the Commonwealth hold

patents covering early research which are licensed to patents covering early research which are licensed to Cochlear. Cochlear.

Manufacturing of the Cochlear implant is done entirely in Manufacturing of the Cochlear implant is done entirely in Australia with exports making up 95% of their sales. Australia with exports making up 95% of their sales.

The University and the Commonwealth have earned over The University and the Commonwealth have earned over $8 million in royalties from their intellectual Property.$8 million in royalties from their intellectual Property.

Examples of Successful PatentsThe Jameson cellThe Jameson cell

A bubble flotation apparatus which operates A bubble flotation apparatus which operates within a column to separate particleswithin a column to separate particles

Licenced to MIM and Jetflote Australia Pty Licenced to MIM and Jetflote Australia Pty LtdLtd

Royalties of $1.4 million received by TUNRA Royalties of $1.4 million received by TUNRA over past 9 yearsover past 9 years

Useful Web Sites

http://www.IPaustralia.gov.auhttp://www.IPaustralia.gov.au

http://www.european-patent-office.orghttp://www.european-patent-office.org

http://http://www.uspto.govwww.uspto.gov

INVENTION/INNOVATION-THE SAME OR DIFFERENT?

Invention: a novel idea which may or may not be Invention: a novel idea which may or may not be commercialcommercial

Innovation: taking an invention and making it Innovation: taking an invention and making it commercially viablecommercially viable

Rule of thumb:Rule of thumb: InventionInvention $1.00$1.00

Development $10.00Development $10.00

MarketingMarketing $100.00$100.00