IP protection may be confusing for newcomers, especially
given the amount of incorrect information and opinions published on the
Internet.
Here are a few common myths about IP protection that you
should be aware of:
Myth#1- A Patent Grants Worldwide Protection
Patent rights are national rights. Therefore you must obtain
a valid patent in each country in which you want enforceable rightsto exclude
others from exploiting your invention.
Generally, the patent process entails the filing of a
priority application and the filing of foreign applications (or the PCT
application) within 12 months of having filed the priority application.
Specifically, the patent process may entail the filing of a
provisional patent application in Australia followed by the filing of foreign
patent applications within 12 months of the filing of the provisional
application, such as in countries such as the US, Europe and the like. For
countries which are not nominated within this 12 month period, it no longer
becomes possible to obtain patent protection having the earliest priority date
in these countries.
Myth#2-A Business Automatically Owns All Intellectual Property Created By
Employees
Many business owners believe that once they hire an employee
or contractor they own the full rights to their work. However, this isn’t true
unless the contract states out in clear words that the company owns the rights
to any intellectual property created by the employee or contractor. Conversely,
entrepreneurs may be surprised to find out that they have no or limited rights
to their work.
In general terms, the common-law position in Australia, is
that the employer owns invention is performed by employees specifically hired
to invent, or for inventions borne from tasks specifically assigned to
employees. To vary this common-law position, IP ownership should be specified
in the employee contract.
Myth#3-if I can’t find a patent, then the invention is free to exploit
Given various IP agreements between countries, it is
possible for foreign applicants to file a patent rights within certain
jurisdictions within certain timeframes from having filed foreign applications.
For example, a company may search the Australian patent
database and form the erroneous opinion that should no patent be found, then
the company is free to exploit the invention. Specifically, if an inventor had
filed a Chinese application, then the Chinese inventor has 12 months in which
to file a corresponding Australian application in which case the Australian
patent application will be given the same filing date is the Chinese
application, which may be subsequently used to find an enforceable position
against the Australian company. Furthermore, using the PCT (patent cooperation
Treaty) convention, foreign applicants have up to 31 months in which to file
corresponding patent applications in Australia.
Myth#4 - if I file a patent, someone can work around it simply by changing
the invention by 10%
This is not true. Patent attorneys are trained to draft
patent claims that avoid trivial workarounds. For example, a well drafted
patent claim will change essential features of the invention, so that no other
person, including those making variations such as additions to the invention
will be able to work around the patent claim.
Myth#5 - a patent specification must be generally worded so as to give the
broadest protection
This is also not true. A patent specification comprises two
parts, the detailed description and the claimed invention. Now, the scope of
monopoly of the patent is determined by the claims. As such, it is the claims
that are written broadly. However, it is vital that the detailed description be
detailed. The reason is that, during examination, should the examiner find
related art potentially destroying the novelty or inventive step of the
invention, any technical aspect a point of difference described anywhere in the
patent specification may be used to distinguish the patent claim from the prior
art.
As such, the general rule is that patent specifications,
especially the first filed patent specification must be as detailed as is
reasonably possible.
Intellectual property matters have
little to no room for error and there should always be a smart strategy in
every case. If you are looking forward to a trusted solution to protecting your
intellectual property rights, give
us a call and we will connect with you some of the top patent attorneys in
the industry!
