1 Place

Patent Attorneys

& Solicitors

• Is IP important?

• Protection

• Adding (actual or perceived) value

• Patents

• Copyright

• Trade marks

• Confidential information

• Patents – what are they?

• 20 or 8 year monopoly

• Trade off - disclosure

• Strategic application

• Complex law

• Geography applied

Why patent?

• A BIG stick (excludes others from what is protected)

• Freedom to operate = competitive advantage

• Perceived as very valuable IP

• Patents – the boxes you need to tick– an invention must be:

a) novel search: http://www.patentlens.net/patentlens/structured.cgi

b) inventive

c) useful &

d) not secretly used before priority date

How are patents relevant for software / the web?

• More appropriate than copyright

• May protect a particular “technical effect”: IBM

• Business Methods

I’m interested but cash strapped – what should / can I do?1. Draft a detailed description of your invention

2. Include the problem your invention overcomes

3. Lodge this with IP Australia as a Provisional Patent

4. Pay $80 filing fee

5. Announce that you have a Patent Pending

6. When you have more money (& within 12 months) lodge a complete specification via a Patent Attorney

• Literary & artistic works

• Copyright is automatically created

• Who created the copyright work?

• Non-employees – take assignment

• Assignment must be in writing

• Search, search, search (freedom to operate)• IP Australia http://pericles.ipaustralia.gov.au/atmoss/Falcon.Search_Screen?

p_search_no=0&p_SearchLevel=FULL

• ASIC (company & business names) http://www.search.asic.gov.au/gns001.html

• Directory• Internet

• Applications• TM HeadStart (registration only) http://www.ipaustralia.gov.au/trademarks/tmhs_start.shtml

• Classification – what do you actually do?• Marks must be distinctive• Words - plain word is best

Applications (continued)• No .com• Convention priority – 6 months from filing• Outside Australia more difficult – be cautious in the US• TM v ®• bogus correspondence

TMs v Company names, business names

My website can be accessed anywhere – what are the foreign tm issues?

• Agreement Generators – Confidentiality & Contract Generator– iptoolbox.gov.au http://www.iptoolbox.gov.au/default.asp?

action=article&ID=249

– Innovic.com.au

http://innovic.com.au/resources/confidentiality_agreement.html

• Too broad = possibly unenforceable• Open ended = possibly unenforceable• Reinforce confidential nature (marking, reminders, return info)• Realistically may be refused• Possibly better for detailed info than concepts / ideas• Patent implications

IP hard sell:• Why your technology is exponentially better than the competition &

why it creates value

• Where do you fit on the IP landscape?

• Hard to replicate / barriers to entry for competitors?

• Status of IP protection?

• Any strategic partnerships?

• Risk mitigation?

• Do not include proprietary or confidential technical info

…..and what about you?