Protecting your IP

It might shock you to learn that the general rule is that copying is allowed.  Economists will tell us that this is efficient and ultimately leads to lower prices.  Patents, Registered Designs Trade Mark registration and Copyright are exceptions to the general rule that can be used to protect your new product.

Many of the opportunities for protection are lost once a new product has been publicly shown, and in general if you want protection it is best to act sooner rather than later.  Formero is strongly committed to maintaining the confidentiality of our customers work and recommends you use suppliers that have the appropriate pre-cautions in place. 

Once you reach the prototyping stage it is a good time to consider the options for obtaining protection of your design.  Below is a brief description on the type of protection available.  

Patents

Patents cover functional aspects of a product - they can be used to stop others making products that work in the same way.

 Patents last for up to 20 years and are available for 'new and inventive' products.  'New' simply means never previously disclosed in public.  You must file a patent application before you disclose your invention to others.  Although Australia and the US have a one year grace period that you might use if the product has already been disclosed in public, this does not extend to other countries.    

The inventiveness' requirement is a relatively low threshold, it requires something that is not routine in the technology. 

The first step to obtaining a patent is to file an application.  The cost to prepare and file the application depends on the complexity of the technology and the quality of the information you're able to provide - budget on about $4,000 for this first step for a simple mechanical invention if you are able to provide a clear description, comments on the new features and some diagrams.  A search will cost extra.

 

Design registration

Registered designs cover the appearance of a product - they can be used to stop others making products with a substantially similar overall visual impression.

A design registration lasts for up to 10 years and is available for products having an overall visual impression that is not substantially similar to a previous publicly disclosed product.

Design registration is a relatively cheap and straightforward option - budget on about $1,500 to prepare and file the initial application.  Again, you must file your application for design registration before you disclose your design to others. 

Trade marks 

A trade mark is a badge of origin distinguishing the goods or services of one trader from those of another.  Your trade mark could be a word (for example KLENNEX®), phrase, shape of an object, logo (for example the NIKE® 'swoosh'), colour, aspect of packaging or any combination of these.

You can use a trade mark registration to stop others using or registering your trade mark (or a deceptively similar mark) on the goods and services covered by your registration (or similar goods and services). 

Trade mark registration formalises your rights to use a particular sign as a trade mark and can be a defence to infringement allegations by another party.  A trade mark registration may be renewed indefinitely. 

The cost of obtaining a trade mark registration depends on the type of mark and whether your application meets an objection from the Trade Marks Office or an opposition from a third party.  You should budget around $1,000 to file a trade mark application.  Before filing an application, it is recommended that an availability search be conducted at a cost of $1,320.

Copyright

In general, copyright does not provide protection for manufactured products.  Copyright automatically protects a variety of subject matter - there is no need to formally register or apply for protection.

The issue of copyright protection in relation to products is a very complex area, and the law has changed in recent years.  Generally, it is an infringement to copy an artistic work without authorisation.  However, copyright laws contain provisions which were intended to prevent dual protection under designs and copyright laws.  This means that a copyright owner's ability to protect a product's design through copyright is usually limited.  Before disclosing a new product, it is therefore important to consider whether to seek the protection of the registered design and/or patent systems.

Getting started

There are a number of free resources available to help with the decision to pursue protection and to help you get started. 

The Patent, Trade Mark and Designs offices are covered by a single government body - IP Australia.  Their website provides useful information on what is protectable and the process for obtaining protection. 

If proceeding with any form of protection it is strongly recommended that you engage a professional to assist.  The Institute of Patent & Trade Mark Attorneys of Australia (IPTA) is a representative body that can help you locate a suitable professional.  Their website also provide brief initial consultations free of charge through member firms.


*This article was kindly supplied by Ben Mott.  Ben is a mechanical engineer and registered patent attorney at Freehills Patent & Trade Mark Attorneys. Ben works with innovative local manufacturers to protect their new products through patent and design protection.