ELEC3017: Electrical Engineering Design

Intellectual Property

References• Fraser Old: Protection of Intellectual Property,

– Notes on class web-site• John Kenny, “Patent nonsense,” Business

Review Weekly, June 19-25, 2003, pp. 34-41.• http://www.wipo.int

– Home page of the “World Intellectual Property Organization”

• http://ipaustralia.gov.au

Intellectual Property• Term coined by John Locke in 17th C.• Includes

– patents, trademarks and copyright• Protected by WIPO

– World Intellectual Property Organization– Organization within the United Nations– Currently 182 member states (inc. China)– Manages a system of treaties

What is Copyright?• An unregistered right• Comes into effect immediately • Sufficient to mark your copyright work with the

copyright symbol © followed by your name and the date

• Does not protect ideas. Only protects the expression of ideas in a piece of work

Copyright Protection applies to …• Original literary works

– novels, instruction manuals, computer programs, articles in newspapers, …

• Films (video, cinema, etc.)• Original musical works• Other original artistic works

– paintings, engravings, photographs, technical drawings, diagrams, etc.

Copyright Implications• Protection is quite weak

– Only protects “copying”– 3’rd party can independently create a similar work

(e.g., software)• may need to be able to demonstrate that creation was

independent

– Software companies create “clean room”environments for this purpose

• closed teams with no access (current or prior) to the original copyrighted software they are trying to emulate

Trademarks• A trademark is a type of “badge” to indicate the

source of goods or services– can be a word, phrase, letter, number, sound, smell,

shape, logo, picture, aspect of packaging or a combination of these

• “House marks” are trademarks used to identify the company as a whole– e.g., FORD, MICROSOFT, …

• “Model marks” are trademarks associated with a specific product– e.g. LASER, WINDOWS, …

Importance of Trademarks• Trademarks are considered “repositories of

good will”– Damages imposed (by a court of law) for infringement

can be very substantial.• Tademarks are valuable property

– The trademark COCA COLA appears on the company’s balance sheet as an asset valued at many BILLIONS of dollars

• perhaps worth more than the company’s tangible assets

Importance of Trademarks (ctd)• Mars Corporation spends more than US$20

million a year registering and protecting trademarks– BRW article

• Trademarks can be lost– Use it or lose it – a competitor may apply to have it

unregistered if not used for a few years– Don’t let it become part of everyday language

• Always use trademarks as adjectives, not nouns• THERMOS, BAND AID, XEROX, VASELINE, …

Trademarks and Registration• Unregistered trademark has some protection

– can sue a competitor for “passing off”• Registeration offers stronger protection• Unintentional infringement of trademarks

– May need to do an extensive search– One way to avoid problems is to use geographic

names – these are difficult for others to trademark– Trademarks can be re-used for unrelated products

• e.g., Apple Computers and Apple Music

• Company names not automatically trademarks

Patents: Introduction• A patent is a right granted in relation to a device,

substance, method or process which is novel, inventive and useful.– Unlike copyrights, patents are designed to cover

ideas (more than one embodiment).• Patents are property in the eyes of the law

– each patent granted in Australia cordons off intellectual territory and assigns it to the applicant (e.g. a foreign corporation)

– likewise, Australians can apply for patents (intellectual territory) overseas

Patenting Costs• To protect a single patent in Australia and the

U.S.A. only– may cost $30,000 to $40,000 over lifetime

• To obtain protection for 2 or 3 related patents in Australia, Japan, U.S.A. and Europe– may cost ~ $200,000 over patent lifetime

• Legal costs in an infringement lawsuit– typically exceed $1,000,000

• could exceed $10,000,000 and go on for years!

Patent Rights• A patent is a monopoly

– granted for a limited duration• 17 to 20 years, depending on the country

– a 3’rd party’s liability for infringement is not affected by independent conception.

– patent is granted to the first to apply• not necessarily the first to invent• but, U.S.A. is different in that it has special “first to invent”

provisions.

Patent Rights (ctd)• Gives you the right to sue an infringing

company/individual for damages– this is a kind of negative right, in that it does not

inherently contribute to the development of products based on the patent

• In many cases, a patent is not sufficient to develop and sell products based on the invention– you may require processes which are patented by

other parties– very common in complex systems

Philosophy of Patents• Patents are designed to give protection to the

inventor of new technology– that will lead to a product or process with

significant long-term commercial gain• In return, patent applicants must share their

know-how– by providing a full description of how their invention

works– patents intended to discourage trade-secrets

• This information becomes public– can provide a basis for further inventions by others

Patents Gone Mad• # international patents growing rapidly

– from 2,600 in 1979– to about 110,065 in 2003

• each of these represents patents in multiple countries -- ~8.5 million national patents in all

• A successful application means the patent examiner has found no objections– this does not mean the patent will survive an infringement

lawsuit– examiners routinely miss important prior art– trend is to file patents with very broad claims

• tries to cover apps which inventor has not yet envisaged– rejected patents sometimes re-filed immediately with minor

mods, hoping for a different examiner

Building on other Patents• Many patents build on others

– novel ways of implementing a broader invention described by an earlier patent

– improvements to an existing process– combining existing inventions

• not sufficient for a patent in all countries

• Required only to show “inventive step”– should not be obvious to a “person skilled in the art”,

given the existing knowledge available at the time of filing

– ultimately a subjective test

Is One Patent Enough?• Patents become public knowledge

– Allows others to patent novel improvements or implementations of your invention

• This allows others to obtain monopoly rights on important variations/incarnations of your ideas.

• May block you from exploiting your patent in the future

• To protect a fundamental new invention may require several patents– With a sufficient network of patents it may be possible

to manufacture & sell products based on your invention, without licensing technology from others

Mistakes to Avoid• If you demonstrate, sell or discuss your invention

in public before you file a patent application, you cannot get a patent.– includes publication in any publically available form,

including placing information on the internet– includes incorporation of the invention in any product

available for sale• even if not obvious from the outside

• You may talk to employees, business partners or advisers about your invention but– only on a confidential basis– written confidentiality agreements are advisable

• Be wary of signing NDA’s requested by others– can later be used to claim you stole their invention

Patent Exploitation Strategies• Large firm

– cross-licensing– patent treaties– alternative technology to skirt around competitors’

patents – avoid licensing fees– might have many seemingly trivial patents

• New startup company (examples)– patent portfolio to support single product range– IP-only firm – licensing & litigation is everything– Hope to be bought out by IP-hungry giant

What Cannot be Patented?• Purely mental processes cannot be patented

– e.g., artistic creations, mathematical models, plans or designs.

• What about an ASIC layout?– easily protected by copyright– can be protected as a “registered design”– registered designs concerned with form and

appearance, not fundamental ideas• the David Jones pattern, design of a chair, …

Patents and Software• Software itself is protected by copyright• A software algorithm, however, can be patented

– at one point this was difficult to do– now commonly accepted, but– the algorithm must still be novel, inventive and useful,

and– must be described in the context of a processing

platform (machine)

Elements of a Patent1. Field of the Invention

– often just one paragraph2. Background of the Invention

– could be very extensive3. Summary of the Invention

– overview of how it departs from existing background4. Brief Description of Drawings5. Detailed Description

– main body of the patent; must be done well.6. Claims

– very important7. Abstract

– used when search patent databases

Got to here by Friday Week 9

Description vs. Claims• The description section in a patent represents

the public disclosure of the invention to others– should be sufficient to enable a person skilled in the

art to implement it• Claims are the main basis on which infringement

actions will be fought– they should, of course be related to the description

Claims Structure• A typical patent contains 2 or 3 top-level

(independent) claims– these must be sufficiently specific that they do not

include something which already exists, while being as general as possible

• Subordinate claims progressively refine these top-level claims– done by explicitly referencing previous claims– cover specific embodiments of the idea

• prevents others from subsequently claiming those embodiments as novel improvements on your invention.

– serve as a second line of defense if your top-level claims are rejected by an examiner or court of law

Example Claims: [Text only; no equations or refs to description]

Who am I?1. A method for transmitting data from a given source to a given

recipient, involving the steps ofa) multiplying each data value by a corresponding signal waveform,b) accumulating said multiplied signal waveforms, andc) delivering said accumulated waveform to said recipient.

2. A method according to Claim 1, where the data values appear sequentially at regular time instants.

3. A method according to Claim 2, where the signal waveform associated with a data value is formed by delaying a single pre-determined signal waveform by an amount equal to said data value’s time instant.

4. …11. A method for recovering data values transmitted according to the

method of Claim 1, involving the steps of …

Provisional Application• Inexpensive

– filing fee ~$100– legal costs (not mandatory) ~$1000

• Gives you 12 months to consider the commercial worth of your innovation – subsequent patent can claim the provisional filing

date as the priority date• Be careful to include a full set of “sample claims”

in the provisional application– failure to claim something in the provisional may

cause you to lose the advance priority date for that aspect of the invention

To patent, or not to patent? • Provisional is a cheap (short term) form of

insurance• Can file a PCT (international patent)

– allows you to defer the costs of obtaining patents overseas, while you decide which foreign markets should be protected

• Keep your innovation as a trade secret? – have to assess risk of someone obtaining your

invention through industrial espionage or reverse engineering.

To patent, or not to patent?• Another alternative is to openly use and publish

details about your innovation.– prevents someone else obtaining a patent for the

same thing– but allows your competitors to freely use your

innovation for their own benefit.• Cost of defending your patent can be huge

– 80% to 90% of patent infringement cases which are brought to court are found against the plaintif

• partly because many patents are wrongly issued

– Most infringement cases settled out of court• pay $1 million to avoid legal costs of $2 million.

Summary• Patents are very important

– monopolies– similar to property ownership– coming up with an invention all by yourself does not

give you the legal right to exploit it.• Key element of international trade

– major part of Australia-U.S.A. FTA in 2004• Patenting is expensive

– not patenting may be much more expensive