“To patent or not to patent…” how do you answer that question…?

This article is presented by Matt Lohmeyer, Ph.D. Principal at IP Resources.

If you own a business that doesn’t utilise IP, you probably haven’t looked carefully enough! Have you ever had a great idea for a new product or service and thought to yourself: "I should really do something with this..."? How can you protect your business and product ideas from copycats?

Luckily, Australia has a comprehensive system for protecting ideas and ‘the fruits of human ingenuity’, what professionals call ‘Intellectual Property’ or ‘IP’ for short.  The downsides of the system are its complexity and the cost of the process, so there’s often a trade-off to be made.  How do you decide whether it’s worth going to the trouble of protecting your ideas?

Matt Lohmeyer and Philip Heuzenroeder, two experts at helping companies large and small with IP protection, have just published a book entitled “Thinking about… Applying for a patent in Australia? Ask the Smart Questions” to help innovators and business owners make the right decisions about patenting their IP. The philosophy behind the book is not to provide generic answers, but to guide you to the answers that are right for you by asking the right questions. These will help you make the critical decisions for your business.

Here are a five of the most critical questions relating to the decision to apply for a patent:

1. What is it that I want to patent?

This question seems so simple, yet many inventors and business owners struggle to answer that question confidently on the first attempt.  We’ve invented a better mousetrap, they say.  Only after some questioning, it turns out that the actual invention is a clever mechanism for releasing the spring much more forcefully.  Being clear about the nature of the invention can throw a whole new light on the invention itself.  Could this invention be useful for springs in car suspensions? For watches? In high-performance catapults?

Other inventions, such as a snazzy logo, a great new slogan, a new business name or a novel design can’t be protected by patents, but may be protectable through a trade mark, a registered design or other form of registration.

The new IP Australia website has an interactive tool to help you decide how best to protect different kinds of IP.  See www.ipaustralia.gov.au/get-the-right-ip/choosing-the-right-ip/  for more information.

2. Is my invention actually patentable?

Many patent applications fail because of a failure to comply with one (or more!) of the four basic requirements for patentability.

In order to be patentable in Australia, inventions need to be:

·         New and still completely secret (which seems to catch out many hopeful applicants)

·         Inventive or at least innovative (something that goes beyond what’s available already or an obvious development of what exists already)

·         Commercially useful (this is not usually a problem…), and

·         Not specifically excluded from patenting, such as logos, designs, etc. (obviously!)

These are the basic requirements for patentability, but it’s worth exploring each of these areas systematically and in some detail with a professional. Does your invention meet all of the requirements for a patent?

3. Do I actually own all of the invention?

Keeping the ownership rights clear and transparent is essential and the sooner it’s properly documented, the easier it will be. Set yourself up for success from the start.

Ownership is another ‘no brainer’ which trips up quite a few hopeful patent applicants. Anyone can apply for an Australian patent, but only the rightful owner of an invention or innovation can be granted a patent. Who is the rightful owner of an invention?  It is generally the inventor or someone to whom the inventor owes, or has given, ownership of his/her invention.  If you are employed and your invention is related to your work, your employer may well own your invention by default.  If you have paid someone to do a job for you, that does not automatically mean that you also own any intellectual property developed by them as part of that job. The situation gets more complicated where there are multiple inventors. Who was actually involved in the invention and who invented what part? Particularly where things are complex, it pays to get a professional attorney involved early.

4. Should I patent my invention?

A patent is a commercial tool and deciding to apply for a patent must be a well-considered commercial decision.

Getting a patent is not cheap and can take years to secure. Whether it’s worth building a protective patent fence around your invention will depend on many factors including:

·         is the invention attractive enough commercially to be worth fencing?

·         do you have the funds and stamina to protect your idea properly? (no point investing in a sturdy gate and botching the rest of the fence with shoestring!)

·         can you patrol the fence against intruders, and

·         are you willing and able to throw out any fence jumpers?

That said, there are some industries where technology moves so quickly and market dynamics are such that the regular patenting process is simply too slow. New media, information technology and telecommunications, for example, represent such fast-paced sectors. Other forms of IP protection may be more effective in those areas.

Of course, this pre-supposes that you want to build a fence at all.  Some great inventions like the black box flight recorder, insect repellent and the power board are all great products that were never protected by patents.  As a result, their inventors did not make a fortune from the fruits of their labours, but at least they had the satisfaction of seeing their inventions transforming the world - even though others reaped the bulk of the rewards.

5. How do I apply for a patent?

The simple answer is: don’t do it yourself - seek professional assistance before applying for a patent.  Technically, anyone can submit a patent application in writing or online. Particularly with the launch of the innovation patent, applying for a patent has become easier and IP Australia is encouraging inventors to do so. However, patent drafting is a very technical skill and the ultimate value of a patent rests on how well it is crafted and how effectively it can be enforced in court.  There are cases where a single word has made all the difference between success and failure. If you are going to invest in your product, invest also in its protection.

Patenting is not a game for amateurs or the faint-hearted. Arm yourself with the right questions to ensure you make the right decisions from the start. If it’s worth doing, it’s worth doing well.

I hope that your invention will one day become as celebrated as some of the other great Australian inventions like the bionic ear, the CPAP mask for sleep apnoea, wave piercing catamarans, polymer bank notes, the flu drug Relenza, the Gardasil cervical cancer vaccine, 802.11 Wi-Fi, Google Maps, or spray-on-skin for burns victims.  Some of these have been developed in laboratories and research institutes, others were created in a garage.  The most important ingredients are the creative spark and plenty of perseverance.

The book, “Thinking about… Applying for a patent in Australia? Ask the Smart Questions” (ISBN 9-781907-453083) was published in January 2012 by Smart Questions Ltd, UK and is available at Amazon.com, other online booksellers and bookshops, (or directly from Alchemy Equities / NSW Innovation Advisory Service?)