Intellectual property for (not so) dummies

[2tonne]

Hi all, I have noticed that there are a few innovative types amongst members of this site. I have also seen the odd discussion of intellectual property issues, e.g., copying plans or protecting new engines, devices etc, but see that there is also sometimes misunderstanding about what can and cannot be protected with different types of IP.

 

 

As a patent attorney by day, and pilot in training on the weekends, I am happy to start this thread as a means for people to ask about and discuss general IP questions, in particular regarding patents, but also registered designs and trademarks.

 

 

But, remember that publicly disclosing the details of your invention will make it unpatentable, so no writing anything specific about your latest creations in this thread!

 

 

Nevertheless, feel free to throw some general questions at me about the IP systems in Australia and abroad, steps involved, expected costs, timeframes...you name it I am happy to have a go at explaining it (all due care and no responsibility of course).

 

 

Cheers,

 

2tonne

 

 

[dodo]

How about a discussion on how IP laws promote innovation? We could take the Wright brothers as one example and Santos-Dumont as another...

 

dodo

 

 

[2tonne]

Hi dodo, an interesting topic...and can certainly get heated answers either way with this one.

 

It depends a lot on your viewpoint, innovators obviously like protection. The need to "get-around" or avoid patents is one commonly cited driver of innovation, as is the desire to obtain a market advantage. Nevertheless, many companies would prefer open competition and to be able to borrow their competitors ideas (pretty common in certain regions of the world). You also find that some fields of technology generate strong opinions, for example there is a very strong anti-patent movement amongst software developers and also in relation to the patenting of isolated human genes.

 

 

[coljones]

Do software developers depend more on patents or more on copyright? It seems that patent law offers less protection than copyright law given the length of protection available under each regime.

 

Cheers

 

Col

 

 

[dodo]

The Wrights and Santos-Dumont took very different approaches to IP rights, and these had very different effects on the development of early aviation in the countries they worked in. The contrasting approaches are an interesting primer on IP rights, and their effect on innovation.

 

The lesson I learnt from it was - if you really do something innovative, you won't keep it! Guess which government socialised the IP rights? Guess which country was so influential in early aviation that many of the words, terms and practices we use every day, resonate from that era?

 

dodo

 

 

[Hongie]

Do patents 'expire' after a certain time period?

 

For an aviation example.. Piper Cub/supercub

 

There are numerous examples produced by an equal amount of companies.

 

And also, say for software, and again to use aviation as an example..

 

An ipad app for navigation, with georeferenced charts. Common in the US of A for a while, and we have only just gotten them (thanks to God and Bas Scheffers) in the form of OzRunways. Soooo.... its not the general idea that is patented/copyright, but rather the execution, and the way it is done?

 

 

[Old Koreelah]

?..Guess which government socialised the IP rights? Guess which country was so influential in early aviation that many of the words, terms and practices we use every day, resonate from that era?dodo

Often wondered about that, Dodo. The French got so far ahead that the Yanks were buying fighter planes from them in WWI.

 

 

[dodo]

Often wondered about that, Dodo. The French got so far ahead that the Yanks were buying fighter planes from them in WWI.

The US government entered the war, and decided the ongoing IP rights squabble was in the way of fighting a war, so took the Wright patents by passing a law, paid them (if I recall, $50,000) and junked the IP issue. It was all about roll control, so we now call those roll-thingummies "ailerons" - a French term.

So IP rights, the free market, and innovation got to meet.

 

They did not stay friends.

 

dodo

 

 

[Old Koreelah]

...It was all about roll control, so we now call those roll-thingummies "ailerons" - a French term...dodo

Glenn Curtiss was a major rival of the Wrights, and I read somewhere that he used hinged control surfaces, rather than the Wrights' patented wing warping.

 

 

[dodo]

The Wright patent was about roll control, but the question was is the importance of roll control a patentable innovation, or was it the method of roll control that was the innovation. Curtiss tried to wriggle around the issue by inventing a method of roll control that didn't rely on shifting wing shape (warping or ailerons both are attached to the wing and alter the effective shape of the wing). Putting a miniature controllable wing between the biplane wings avoided this.

 

However, the squabble went on....

 

The big fight in the US was between the Wrights and Curtiss, because the rest of the world went on flying and developing, and avoided the US, where your aeroplane might be impounded subject to a court case, if you imported it to demonstrate it, as happened at least once. The Wrights did little flying, putting their efforts into selling their innovation, and suing anyone else who flew.

 

dodo

 

 

[dazza 38]

Do patents 'expire' after a certain time period?

 

I not sure how exactly it works but in the USA, a lot of designs are copied after a certain time period is lapsed. Eg- Armalite who designed the AR-10, AR-15 which turned into the M16 Assault rifle initially gave Colt the licences and trademark to produce the AR-15 in 1959. Now there would be at least 6 or 7 different manufactures building a clone of the AR-15. Same as multiple companies produce a copy of the Colt 1911 which was originally design by John Browning.

[David Isaac]

Yes patents expire. The time they are valid allegedly gives the innovator (as long as he is prepared to defend his patent) the right and ability to make reasonable returns on his innovation.

 

 

[2tonne]

Hi Col, software developers can rely on both copyright and patent protection.

 

Copyright is inherent in the code once it is created and protection lasts a long time - life of the author plus 75 years. However, it only protects copying of the code itself (or substantial parts of it) and doesn't necessarily cover the functionality of the software. Patent protection is shorter at 20 years from the time a complete patent application is filed, but can be much broader in scope and can protect functionality with no need to describe any code. That is why patent protection can be difficult for other software developers to get around.

 

One well known software patent is the Amazon "1-click" patent (US 5,960,411), which has also been referred to a "business method" patent. It relates to a "method and system for placing an order to purchase an item via the Internet". There is no description of any code in this patent and it defines the invention using very simple block diagrams representing each step of data manipulation. This patent was challenged in the US and some of the original broad claims were found invalid, however it is still in force in the US with some narrower claims.

 

And just as an example of a patent claim, here is claim 1 of that US patent.

 

1. A method of placing an order for an item comprising:

 

under control of a client system,

 

displaying information identifying the item; and

 

in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system;

 

under control of a single-action ordering component of the server system,

 

receiving the request;

 

retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and

 

generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and

 

fulfilling the generated order to complete purchase of the item

 

whereby the item is ordered without using a shopping cart ordering model.

 

 

[2tonne]

Do patents 'expire' after a certain time period? For an aviation example.. Piper Cub/supercub

 

There are numerous examples produced by an equal amount of companies.

The term of a patent is, in most cases, 20 years from the filing of a complete patent application, although they often lapse earlier if the patentee decides not to pay 'renewal' fees. Protection and enforcement is also on a country by country basis, there is no one patent that covers the whole world (although there is a PCT "international application" system - confusing I know). There would also be many aspects of aircraft that are not going to be patentable. For example, just the shape or design of an aircraft would ulikely be patentable unless it had some new and inventive (non-obvious) functional feature. Nevertheless, it may be possible to cover shapes or design features using design registration instead. Design registration gives a shorter period of protection of up to 10 years. Copyright could also come into play in relation to the aircraft plans, but it starts to get complicated there...

 

And also, say for software, and again to use aviation as an example..An ipad app for navigation, with georeferenced charts. Common in the US of A for a while, and we have only just gotten them (thanks to God and Bas Scheffers) in the form of OzRunways. Soooo.... its not the general idea that is patented/copyright, but rather the execution, and the way it is done?

I'm don't know what IP would have been protected around the use of ipad apps for navigation, it's not an area I am familiar with. Sometimes the delay in bringing software into Australia may be due to commercial negotiations and proprietary licences without any patents in place - similar in a way to the reasons we get restricted content on iTunes and apple TV in Australia compared to the US, for example.

 

 

[Old Koreelah]

?.. The Wrights did little flying, putting their efforts into selling their innovation, and suing anyone else who flew.dodo

...as developments in flying passed them by...

 

 

[bushcaddy105]

Back in the 1980's I took out a Provisional Patent on a prize-winning invention of mine. The 12 months window that this gave me quickly taught me that patents are for the big boys, not the back-yard inventors. To have taken out reasonable patent protection (and that only applies to countries which subscribe to patent conventions) back then was going to cost tens of thousands of dollars. I still have the paper work to remind me of this lesson!

 

 

[2tonne]

Yep, certainly is an expensive process. A provisional application could set you back around $5-$7K, a complete international application could cost around 10-15k, and entering the 'national phase' (filing applications in individual countries/regions) could cost from 10-50k or more depending on how many countries you file in and the number of translations needed. For sole inventors/small companies I usually recommend finding a commercial partner to wear the costs of entering the national phase. And of course, the costs of prosecuting (having the application examined) and maintaining (paying renewal fees) for patent applications can be significant and continue for many years.

 

 

[djpacro]

Curtis Pitts had a patent for his biplane configuration with specific aerofoil combination providing for good stall characteristics upright or inverted.

 

As for design registration I recall something about industrial products being free to copy once being out in the marketplace.

 

In my opinion it is not worth selling aircraft plans. Better to sell the kits of parts and provide only assembly information. Of course it is a much bigger investment but the best protection of IP as you have the engineering data hidden and locked up.

 

 

[Head in the clouds]

I would like to encourage 2Tonne to provide us with a run-down of the various aspects of IP, and how they might be beneficial to someone who perhaps has ideas for something new to do with aviation. There are so many possible avenues that most of us wouldn't have much of an idea where to start.

 

Is it something that you could copy and paste or provide links to succinct descriptions of them? A brief explanation of the 20 year (20yrs now I think, used to be 17 yrs?) Patent process, timing and current costs of development of the Specification, Application/Filing fees, Examinations and Issue of Letters.

 

The Innovation Patent process and how it affects us and where it is valid, prosecution of infringements.

 

The Copyright rules and processes.

 

The Design Registration process and how to make any practical use of it, and how to actually win a prosecution when your competitor copies it almost exactly, but not quite ...

 

And regarding Trade Marks I'd be particularly interested in the relative merits of whether a Defensive Mark should be applied for in different Classes of Goods and Services at an early stage or whether that can wait for objection/examination at a time when another Application that you'd like to block might be made.

 

Some years ago I was applying for some Patents and a skeptical friend recommended I read the book about Gordon Gould's invention of the Laser and the unbelievable struggle he went though to patent it. I can highly recommend the book, it's a rivetting read called Laser - The Inventor, The Nobel Laureate and the Twenty-Year Patent War by Nick Taylor. It will make anyone think twice about the likelihood of getting rich even if you happen to invent one of the most life-changing technologies of our age.

 

EDIT - I started this this morning and only just got around to finishing it, and I see 2Tonne has added some of the cost info in the meantime, thanks.

 

 

[2tonne]

HITC, that's some homework you have given me! Actually, would be happy to put together a few timelines with basic procedures and estimates of costs. Having had a look online, there doesn't seem to be anything readily available that achieves the desired result of putting it all together in an an easy to digest format. Due respect to IP Australia, but even on their website you have to click through a lot of pages to get the information. I hope you don't mind that it will take me a few days to get all this together, but I think it will be a worthwhile exercise even for me.

 

Regarding your TMs question, there is a very specialised type of trade mark in Australia called a Defensive Trade Mark, but this is applicable only to very famous brands, e.g. Coca Cola, Nike, who can file one defensive application and cover all classes. It seems clear from your question though that you are not referring to this particular type of trade mark.

 

To answer your question: as a general rule, if you are using or intending to use your trade mark soon, then it would be desirable to file an application for your trade mark for the goods/classes you intend to use it on. Reason for this if someone else gets there own very similar or identical trade mark application accepted by IP Australia, it can be a difficult and expensive process to "oppose" it or have it removed from the TM register. If you have already filed your own application, then this should be found by a trade mark examiner and block the other trade mark from being allowed by the Examiner. On the other hand, if you are not using it, then probably less incentive to file your own speculative application because if you don't use it within a few years from registration it may be open to cancellation for "non-use". This is a very simplistic answer.

 

(note usual disclaimers about this not constituting legal advice, etc etc)

 

 

[Head in the clouds]

HITC, that's some homework you have given me! Actually, would be happy to put together a few timelines with basic procedures and estimates of costs. Having had a look online, there doesn't seem to be anything readily available that achieves the desired result of putting it all together in an an easy to digest format. Due respect to IP Australia, but even on their website you have to click through a lot of pages to get the information. I hope you don't mind that it will take me a few days to get all this together, but I think it will be a worthwhile exercise even for me.Regarding your TMs question, there is a very specialised type of trade mark in Australia called a Defensive Trade Mark, but this is applicable only to very famous brands, e.g. Coca Cola, Nike, who can file one defensive application and cover all classes. It seems clear from your question though that you are not referring to this particular type of trade mark.

 

To answer your question: as a general rule, if you are using or intending to use your trade mark soon, then it would be desirable to file an application for your trade mark for the goods/classes you intend to use it on. Reason for this if someone else gets there own very similar or identical trade mark application accepted by IP Australia, it can be a difficult and expensive process to "oppose" it or have it removed from the TM register. If you have already filed your own application, then this should be found by a trade mark examiner and block the other trade mark from being allowed by the Examiner. On the other hand, if you are not using it, then probably less incentive to file your own speculative application because if you don't use it within a few years from registration it may be open to cancellation for "non-use". This is a very simplistic answer.

 

(note usual disclaimers about this not constituting legal advice, etc etc)

Hi 2Tonne, I certainly don't want to make work for you but this is a subject about which I am often asked because I used to help a bloke known as "The Inventor's Friend", to build prototypes for new products. He was a panelist on the very first series of the The Inventors in the 1970s, and a very skilled toolmaker. I went on to protect a few of my own inventions, actually taking one all the way through to the grant. I never managed to capitalise on any of it though.

 

If you'd find it useful to collate this information, perhaps as a handout for your business, I'm sure it would be a very valuable resource on this site too, particularly as people are becoming more IP conscious these days.

 

I don't want to give too many specific details about my Defensive Mark question on open forum until I have the answer (catch 22?) but as an example - say I had a company name (and was using it) which might be very attractive in more Classes than just the one I would be using it in. So I have registered the name as a Trade Mark (I'm waiting for its examination now) and will be using it to sell products under that Brand. However that name could be very attractive (and is not being used by anyone at present) in a different Class, should I register the name in that class just to block it from someone else taking it? But then I wouldn't be using it in that class so it could become open to challenge for cancellation ... or can I take out a Defensive Mark just to block it and not have to use it in the other Class(es)?

 

A hypothetical example might be - I want to build and sell luxury cars and I do a search and no-one is using my favourite name FussyCars. So I get the domain name and register the business name but I still don't have any protection for the name, so I apply for and am granted the 'word only' Trade Mark "FussyCars". Now I discover that a cab company are looking for a name for their upmarket commercial hire-and-reward limousine company and they are thinking FussyCars would be a great name.

 

So the problem I have is that I registered in Class 12 (or whatever) covering manufacture/sale of vehicles etc and if they want to register, they would do it in Class 28 (or whatever) covering carriers, public transport and the like. However, since we are both in a fairly similar business i.e. offering luxury vehicles, I really don't want to risk that they might get a bad reputation and their business name be associated with mine. If they were making 'cars' for elevators in highrise buildings I wouldn't be concerned but with their limos and my vehicles both out on the road with FussyCars written on them it's too close for comfort. So what should I do? If I register the name in their Class and don't use it, it could be challenged and cancelled in a couple of years' time, so can I register it as a Defensive Mark? In which case would I have to pay the $300 fee for every Class or is there some other fee structure for Defensive Marks?

 

 

[2tonne]

Hi HITC, good questions and you clearly have an understanding of TMs and the registration process. I have paraphrased your questions below and provide some very general responses.

 

1. Can my TM registration in one class prevent someone else from registering it in another Class of goods/services?

 

The answer is yes, your TM registration in one class could block someone else from registering the same TM in other classes of goods/services, but only if they are similar goods or closely related services. This will always depend on the facts in each case, and determining whether goods are similar will take into account the nature of the goods, the intended use of the goods and the usual trade channels. An example of similar goods may be aircraft engines (in Class 7) and aircraft (in Class 12). Closely related goods and services could be, for example, aircraft (goods in Class 12 – e.g., Cessna is registered in Class 12) and aviation flight schools (services in Class 41). In this case, a flight school trying to register "Cessna" in class 41 would likely fail due to the Class 12 registration.

 

In the example you give, a company manufacturing luxury cars has a TM registered in one class, and another company is providing upmarket car hire services. In this case, it could probably be argued that the goods (luxury cars) and services (luxury car hire) may be related. Nevertheless, it would always depend on the facts in each situation.

 

2. Can I stop someone from using (infringing) my TM on goods outside the Class in which the TM is registered?

 

Yes, similar to blocking registration of someone else’s TM, you could sue someone for infringement on the basis that they are using the same (or deceptively similar) TM on similar goods or closely related goods and services, even though those goods and services are not in the Class in which your TM is registered.

 

There is another provision for “well known” trade marks, but that is rarely used. In that case, if your TM was “well known” (ie famous) in Australia, then you could also sue someone for using your TM in relation to any goods or services. However, it is difficult to demonstrate that a brand is “well known” in Australia – think of TMs like QANTAS, Coca-Cola and Nike as good examples that a court might consider well known TMs.

 

3. If I filed my TM in classes of goods/services where I do not intend to use it, can it be removed from the TM register?

 

Yes, one ground for removal of a TM from the register is that there was never an intention to use it (e.g., the TM application was filed to block others, but with no intention to use on those goods/services for which it was registered).

 

Also, if the TM is not used on certain goods and services for at least 3 years, someone could seek to cancel that part of the TM registration. Nevertheless, the TM registration may remain valid for the class of goods/services in which the TM is actually used.

 

4. Can I register my TM as a defensive mark?

 

No. Only very famous marks can be registered as a defensive TM registration in Australia. Again, think along the lines of QANTAS, Coca-Cola, Nike - something that pretty much everybody in Australia would recognise instantly.

 

In a nutshell,

 

· Best to only seek registration of a TM for goods/services that you intend to use the mark on.

 

· TM registration in one Class may prevent others from registering the TM on similar goods or closely related services in other TM Classes, and you could take action to try to stop them using the TM

 

· No intention to use / non-use can result in cancellation of a TM (at least in part)

 

· Defensive trade mark registrations available only to very famous trade marks

 

I hope these comments are helpful, but if you need a more detailed answer I would have to defer to a colleague of mine who has a much better understanding of TM law and practice.

 

Cheers, Tony

 

 

[Head in the clouds]

I hope these comments are helpful....

Very helpful indeed Tony, thank you. I had tried to contact my previous Patent Attorney about this but it transpires that he's retired so your post was very timely.

 

I'll wait for the examination to be completed and the Mark registered, about another six or seven weeks, then I'll get back to you.

 

Cheers, Alan

 

 

[2tonne]

You're welcome!

 

 

[2tonne]

For those who are interested, I have put together some brief information with expected timing and costs of filing patent applications.

 

The first document (Steps in the Patenting Process) is a very simple rundown of expected costs for taking the "usual" approach of filing a provisional patent application and then following up with an International PCT application (which reserves the right to file in any of the PCT contracting states; listed here http://www.wipo.int/pct/en/pct_contracting_states.html), and then national/regional phase applications. I shamelessly pinched this summary from a colleague of mine.

 

One of the main benefits of filing a PCT application is that it delays the costs of having to file patent applications in individual countries/regions by 18 months.

 

The next document (AU Provisional and PCT International application) is a timeline that I put together with a little more information about the same AU prov and PCT filing process.

 

As an alternative to the PCT route, it is possible to file an application in Australia and then one or more "Convention" applications overseas (possible in most countries that would be of interest) within 12 months. This can be useful if you want to file only in a small number of countries (around 1-3) outside of Australia, although in my experience this option is not used very often.

 

The final document (AU provisional and Complete Application) outlines the expected costs and timing for filing a provisional patent application followed by a complete Australian patent application. This approach would be taken if you want protection only in Australia. Although the steps after filing the Australian complete application are specific to Australia, they give an an indication of the sorts of steps that would take place during examination of a patent application in other countries (with each having their own particular procedures).

 

I am also putting together some brief information on design registration (good for protecting shape and configuration of an article) and registration of trade marks and will post these soon.

 

Any questions, let me know.

 

Steps in the Patenting Process.pdf

 

AU provisional and PCT International application.pdf

 

AU provisional and Complete Application.pdf

 

Steps in the Patenting Process.pdf

 

AU provisional and PCT International application.pdf

 

AU provisional and Complete Application.pdf

 

Steps in the Patenting Process.pdf

AU provisional and PCT International application.pdf

AU provisional and Complete Application.pdf