This is a guest post from Ben Mott. Ben Mott is a Principal with Wadeson, a firm of Australian & New Zealand Patent Attorneys & Trade Mark Attorneys based in Melbourne, Australia. Visit them at www.wadesonip.com.au.

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Guarding Against Imitators

Imitation may be the sincerest form of flattery but generally hurts the bottom line. Patents, design registrations and trade mark registrations can be used to guard your invention or business against imitators.

  • Patents can be used to stop others copying important functional details of new products and processes. They last for up to 20 years.
  • Design registrations can be used to stop others copying the appearance of new products. They last for up to 10 years.
  • Trade mark registrations can be used to stop others using your trade mark in relation to selected goods and services. They can last indefinitely.

Patent, design and trade mark protection can be pursued in parallel. This is often recommended.

Copyright provides protection for a wide range of ‘works’ including literary and artistic works, however generally speaking, copyright does not protect three dimensional products once in production. Copyright is automatic – there is no need to apply for protection.

Trade secrets do not protect you from reverse engineering or from your competitors independently developing similar technology.

A patent attorney is an expert who advises in relation to patents and registered designs. Patent attorneys are often referred to patent lawyers or patent agents although most patent attorneys are not lawyers.

A trade mark attorney is an expert who advises in relation to trade marks. Trade mark attorneys are often referred to trade mark lawyers or trade mark agents although many trade mark attorneys are not lawyers.

What is a patent?

A patent is a commercial asset which gives its owner the right to stop others ‘exploiting’ an invention. ‘Exploiting’ includes making, selling, using and importing. The invention could be a product and/or a process.

Patents can be used to preserve profit margin by limiting competition and/or to generate new income streams by licensing. Patents can be valuable marketing tools and assist in supporting an innovative business culture. Patents can be bought and sold like other commercial assets.

A patent attorney is an expert who advises in relation to patents and registered designs. Patent attorneys are often referred to patent lawyers or patent agents although most patent attorneys are not lawyers.

Keep it secret!

If patent protection is of interest, your invention should be kept secret and not sold or used commercially until an initial patent application is filed. Otherwise, generally speaking, it is not possible to pursue patent protection.

Australia, the US, Canada and a few other countries have grace periods which may allow you to pursue patent protection if your invention is no longer secret.

What does a patent cover?

The coverage of a patent or patent application is defined by its ‘claims’. The wording of the claims is critically important. Each claim is a single sentence which can be thought of as a list of features. To infringe a patent claim each and every feature of the claim must be taken.

Example patent claim

A plumbing fitting including…

  • an inlet conduit;
  • a first outlet conduit;
  • a second outlet conduit;
  • a valve for closing the first outlet conduit and
  • a solenoid valve for closing the second outlet conduit.

Plumbing fittings which do not include a solenoid valve for closing the second conduit are not covered by this claim. Infringement could be avoided by substituting another type of valve for the solenoid valve.

On the other hand…

  • The claim simply specifies ‘a valve for closing the first outlet conduit’ – a plumbing fitting including any type of valve for closing the first outlet conduit is covered; and
  • The claim is silent on the inlet conduit having a valve, so the claim covers plumbing fittings with or without a valve on the inlet conduit.

A patent will typically include multiple claims of differing scope. To successfully enforce a patent only one claim need be valid and infringed.

Claim wording is something to be carefully considered with a patent attorney. The approach to claim interpretation varies from country to country. Some countries have rules which extend coverage beyond the plain meaning of the words of the claim.

What does ‘inventive’ mean?

To qualify for a standard patent a product or process must be ‘inventive’.

The inventiveness threshold varies from country to country. In Australia it requires a variation over selected publicly known information which is non-obvious from the point of view of the ‘skilled person’.

The selected publicly known information includes…

  • Common general knowledge;
  • Information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant; and
  • Combinations of this information that the skilled person could be reasonably expected to put together.

A first step to assessing whether a product or process is sufficiently inventive is to identify the skilled person and the information that can be considered. Then the question is “Is the invention obvious in light of this information?” As one Court put it “something is obvious if it is lying in the way, so that one who takes the ordinary route will be likely to come upon it.” Anything more than this is likely sufficiently inventive to qualify for patent protection. Only a “scintilla of invention” is required.

When assessing inventiveness hindsight is impermissible – it is irrelevant that looking back the invention seems simple or easily made.

What does ‘innovative’ mean?

Innovation patents are intended to cover ‘workshop improvements’. Inventiveness is not required. An innovation patent can validly cover an obvious combination of well known features.

To qualify for an innovation patent a product or process must be ‘innovative’. This requires a variation over publicly known products and processes which “makes a substantial contribution to the working of the [product or process]”. This is a very low threshold. “Substantial” simply means “real or of substance”.

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