CRITICAL IP ISSUES
Confidentiality
It is essential that an invention or design is not publicly disclosed until suitable protection is filed. Disclosure is by publishing, including on a webpage, email or technical brief, demonstrating or displaying, offering for sale or receiving orders to sell units employing a new invention or design. Disclosure prior to filing may reduce the scope of protection that may otherwise be available, or simply prevent a valid patent or design registration from being obtained.
This principle reflects that a monopoly given for a period of time for a patent or design registration will only be granted by the Intellectual Property Office in return for first disclosing the new idea or design at the time of filing for protection. Otherwise, why should an IP Office grant a monopoly in an idea or design that has already been disclosed to the public. There are exceptions to this principle that should be considered. If an idea has been displayed at Agricultural Fieldays such as Mystery Creek, or an exhibition approved or gazetted by the IP Office, the inventor or designer can have six months from the first day of the approved exhibition to file an application to protect IP.
You can be assured that talking to your patent attorney about your invention or design is not going to affect your patent rights as all communications with your attorney are confidential.
The prior disclosure principle unfortunately does not sit well with a designer or inventor's desire to assess whether the design or invention is commercially viable. In such situations, a confidentiality agreement or NDA is advisable and we recommend you seek our advice before disclosing your invention or design in any form to any third parties. To a limited extent, a confidentiality agreement can be used to avoid public disclosure. We can recommend options for strategically managing your IP which can include preparing a suitable agreement for use when approaching manufacturers, engineering businesses, venture capitalists, discussing with potential investors, or any one interested in marketing the design or invention.
Searches
Searching of the patent, design or trade mark registers is recommended before committing resources to protect and exploit intellectual property, or for any import or export business. IP law is different in each country so specific advice and a freedom to operate clearance search is recommended.
There are very good reasons for conducting a search. The primary reason is to avoid infringement. For patents and designs, a search will determine whether manufacturing or marketing a product will infringe any current patents or registered designs. For trade marks, a search will determine whether use of a trade mark in relation to certain goods and/or services will infringe any registered trade marks. Generally, only an identical or similar trade mark registered in a relevant class of goods or services will be infringed if it is considered to be likely to deceive or cause confusion. We are happy to conduct a clearance search and advise you on this important issue.
For patent searches, a further reason for a search is to assess the degree of patentability of an invention. That is, to determine whether the invention or any aspect of it can be considered new in light of the results of the search. A search may result in obtaining information on similar subject matter that will determine the extent of monopoly protection available in the invention.
An overseas search may be prudent if you are considering exporting products to a valued market or wish to secure protection for your product overseas.
A further reason for having searches conducted is to monitor the new technologies being developed and protected by competitors and evaluating such technological developments. For example, car manufacturers commonly review patents obtained by competitors to keep abreast of the research and development being conducted in that industry.
Risks of Inaction
If you have a new product or design and proceed to market it without protection, or without checking that the market is clear of IP rights, you run the risk of infringing a competitor's IP. This situation can be costly to resolve with defending an infringement action or settling a dispute. Further losses can include the investment in advertising the product and brand promotion, and possibly the adverse affects on business reputation and business relationships.
A danger with not taking action to protect a new and commercially viable product or process is that an idea can be easily copied, particularly if it is easy to reproduce. In the case of importers and exporters, not taking steps to ensure that you are free to market the product in any country could lead to expensive and unwelcome litigation by competitors all to willing to frustrate the endeavours of an expanding business enterprise.
We encourage you to seek our assistance if you have a product you wish to develop. We can advise on whether you are free to market your product and ensure you are aware of the options for protecting your valuable intellectual property.
Conflicts and Disputes
Please contact us directly to discuss any conflicts you are facing such as resolving cease and desist letters, notices of oppositions to trade marks and patents, infringement actions, copyright notices, revocation actions, or even assistance with managing compliance reports and examination reports.