Intellectual property may be seen as any product of the intellect that has commercial value. Some examples of intellectual property are:
- the underlying functionality that differentiates your products and services
- your reputation in trade
- the get-up, look and feel of your products
- product designs — the visual appeal and appearance of your goods
- the know-how that your company thrives on
- trade secrets
- original literary or artistic works
Over the last four centuries many laws have come into existence throughout the world that protect intellectual property in much the same way that “real estate” and other forms of property have enjoyed. In this respect, intellectual property may be bought, sold or transferred in ownership like a house, a car or a boat and like these articles it may also be ‘rented’ or ‘leased’ to others.
In the past the primary capital worth of a company or business was found in its plant, machines, buildings and other real assets. In recent times, however, a great deal of a business’ worth comprises intellectual property. For example, a company such as Carlton & United Breweries (which may seem a 19th Century brewing company) has well over 50% of its capital in intellectual (invisible) property. As another example, the word or brand (trade mark) Coca Cola™ is worth many billions of dollars.
The following are more specific forms of intellectual property some of which comprise rights that may be sought from the Government in each country and used to protect the particular form of intellectual property.
Much of the following information is based on and available at Patent Offices worldwide including the Australian Patent Office www.ipaustralia.gov.au
A patent is a statutory right granted to protect inventions. A patentable invention can be any new and useful device, machine, substance (composition of matter), method or process, the functional features of which are protected by the patent.
By obtaining a patent the inventor (or applicant) receives a monopoly on the commercial exploitation of the invention for up to 20 years.
There is no such thing as a ‘world patent’ because the laws for patenting differ from country to country. However, there is an international process for applying simultaneously for patents in most countries.
Generally a valid patent cannot be granted for anything unless it is:
- Inventive — Not obvious to a person of ordinary skill in the relevant technical field at the time of filing the first patent application for the invention;
- Novel — New and ‘unique’ in the sense that no prior art or technology discloses all the features of the claimed invention.
Trade Marks may consist of a word, number, phrase, slogan, logo, symbol, sound, smell, shape, picture, aspect of packaging or any combination of these, which is used to distinguish one traders goods and services from those of another.
A mark that is directly descriptive of the goods and services is not registrable. For example, the word “FASTENER” could not be registered as a trade mark in relation to nuts, bolts or such hardware products because all traders of these goods should be able to freely describe them with this word.
It is advisable to search existing trade mark records before using your trade mark or applying to register the mark because use of your mark may infringe the rights of others who own or have previously used a mark that is substantially identical or deceptively similar to your mark.
A registered trade mark provides its owner the exclusive legal right to use, authorise the use, license or sell the mark within Australia in respect of the goods and services for which it is registered.
If used properly such that the mark does not become directly descriptive of the goods, a registered trade mark may be renewed every 10 years and have a perpetual lifespan while the property grows in value as it becomes known and used in the market. If used improperly or not used in the market, a registered trade mark may become vulnerable to deregistration.
A design relates to the overall appearance of a product or article and may comprise the shape, configuration, pattern and/or ornamentation which, when applied to the product, gives it a unique appearance. A registered design gives the owner protection for the visual appearance of the product but not the underlying function of the product.
To be registrable, a design must be new and distinctive. For example, in Australia ‘New’ means the identical design (or one very similar) has not been publicly used in Australia nor has it been published in a document within or outside Australia. For example, a design would not be considered new if it had been ‘published’ on the Internet before the date an application to register the design was filed.
A design is ‘distinctive’ unless it is substantially similar in overall appearance to other designs already in the public domain.
Before filing an application, it is advisable to search existing design records because through use of your design you may face legal action if you infringe the design rights of the owners of other similar designs.
Circuit Layout Rights
In Australia, Circuit layout rights automatically protect original layout designs for integrated circuits and computer chips. While these rights are based on copyright law principles they are a separate, unique form of protection. There is no requirement for registration for the granting of rights to the owner of a layout design in Australia.
Circuit layouts are usually highly complex and the intellectual effort in creating an original layout may be considerable and of great value. An integrated circuit or chip made from the plans is the key to the operation of all kinds of electronic devices, from heart pacemakers to personal computers.
The owner of an original circuit layout has exclusive right to:
- copy the layout in a material form;
- make integrated circuits from the layout; and
- exploit it commercially in Australia.
Commercial exploitation may occur by importation, sale, hire or distribution of a layout or an integrated circuit made according to the layout. Similar protections for circuit layouts exist in a number of other countries such as the United States.
Plant Breeder's Rights
Plant Breeder’s Rights (PBR) are exclusive commercial rights in respect of a plant variety and, like patents and copyright they are a form of intellectual property. PBR’s are administered under the Plant Breeder’s Rights Act 1994.
In relation to propagating material of the registered plant variety, PBR applicants have exclusive rights to:
- produce or reproduce the material;
- condition the material for the purpose of propagation (conditioning includes cleaning, coating, sorting, packaging and grading);
- offer the material for sale;
- sell the material;
- import the material;
- export the material; and
- stock the material for any of the purposes described in (a) to (f).
Exceptions to the breeder’s right are the use of the variety privately and for non-commercial purposes, for experimental purposes, and for breeding other plant varieties. A variety can be used for these purposes irrespective of the existence of Plant Breeder’s Rights. Farm saved seed is permitted, unless the crop is declared by regulation to be one to which farm saved seed does not apply. Currently no crops have been declared in this way in Australia.
In addition to PBR’s, other forms of protection in addition to PBR’s should be considered for your overall business strategy. These other rights include:
- Trade Marks for a word or symbol that distinguishes your products or services (note a variety name does not function as a Trade Mark);
- Patents because potentially a patent can be sought for plant material as well as for the processes used to produce it. In Australia a PBR and a patent may apply to the same variety provided all of the relevant criteria are met.
Copyright protects the original expression of ideas, not the ideas themselves. Registration is not required as it automatically safeguards your original works of art and literature, music, films, sound recording, broadcasts and computer programs from copying and certain other uses from the time it is created and written down. Copyright may be required to be registered in other countries such as the US.
Copyright protection is provided under the Copyright Act 1968 and gives exclusive rights to license others in regard to copying the work, performing it in public, broadcasting it, publishing it and making an adaptation of the work. Rights vary according to the nature of the work. Those for artistic works, for instance, are different to those for literary and musical works.
Although making copies of copyright material can infringe exclusive rights, a certain amount of copying is permissible under the fair dealing provisions of the legislation.
Copyright doesn’t protect you against independent creation of a similar work. Legal actions against infringement are complicated by the fact that a number of different copyrights may exist in some works – particularly films, broadcasts and multimedia products.
You should consider using a copyright notice because although a copyright notice with the owner’s name and date is not necessary in Australia, it can help prove your ownership of the copyright, and is necessary to establish copyright in a few overseas countries. It can also act as a deterrent to potential infringers.
Copyright is lost if the owner applies a three-dimensional artistic work industrially. In such a case, it is necessary to register the design if protection is required.
The duration of copyright varies according to the nature of the work and whether or not it has been published. Depending on the material, copyright for literary, dramatic, musical and artistic works generally lasts 70 years from the year of the author’s death or from the year of first publication after the author’s death. Copyright for films and sound recordings lasts 70 years from their publication and for broadcasts, 70 years from the year in which they were made.
Trade Secrets and Confidentiality
A trade secret may be considered as a secret formula, method or device that gives you an advantage over competitors. In order to be a trade secret the relevant information must be such that it is not generally known to others in your trade. If you take reasonable steps to keep the trade secret ‘secret’, the Courts will protect you from unauthorised disclosure by: industrial spies; competitors and employees that wrongfully acquire and utilize the trade secret; anyone with any type of duty not to disclose the information.
A trade secret is both a type of IP and a strategy for protecting your IP. It may provide effective protection for some technologies, proprietary knowledge (know-how), confidential information and other forms of IP in circumstances where perhaps your IP is unlikely to result in a registrable right, or maybe you want to retain exclusive use beyond the term of a patent. A trade secret strategy may also be appropriate when it’s difficult to copy the construction, manufacturing process or formulation from the product itself; that is when reverse engineering is unlikely.
However, secrecy does not stop anyone else from inventing the same product or process independently and exploiting it commercially. It does not give you exclusive rights and you are vulnerable when employees with this knowledge leave your firm. Trade secrets are difficult to maintain over longer periods or when a larger number of people are made privy to the secret. Furthermore, proving a breach of confidentiality under common law can be complex and is potentially more costly than defending registered rights.