Intellectual Property rights- Myths Vs facts

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!