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    Who’s looking after you, kid?

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    “Of all the trade marks on all the brands in all the world, she had to copy mine.” – not spoken by Humphrey Bogart in Casablanca
     
    In the cut-throat world of intellectual property protection, there’s only one thing you can rely on. Rights. Registered rights. Don’t take no short cuts. Don’t stick your neck out for nobody. Get protected. Make a date with fate at your IP attorney’s office. If you don’t, you’ll regret it. Maybe not today. Maybe not tomorrow. But soon and for the rest of your life. We asked those in the know to tell you why.
     


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    Sussing out the competition
     
    In the IP landscape, it’s every gumshoe for himself. You gotta do the best you can with what you got. That means keeping tabs on the next guy. And the next. Karen Sinclair and Geordie Oldfield from Watermark give us the inside story on sussing out the competition.
     
    At their most fundamental level, intellectual property systems provide limited legal protection for various components of the commercial value chain, including patents, in return for a company or organisation sharing its technology know-how through public databases.
     
    Many companies involved in the commercialisation of technologies understand the importance of intellectual property rights in protecting their own ideas and ensuring their activities do not impinge on the rights of others. However, the power of IP-related competitive assessment in defining a business strategy is often overlooked. You should be able to answer some crucial questions: Who are your competitors? How, when and where are they kicking goals?
     
    A patent applicant is compelled to make the nature of their invention, and how to perform it, clear and intelligible to, and able to be reproduced by, people skilled in the particular technology. The International Patent Classification system, maintained by the World Intellectual Property Organisation, is divided into approximately 70,000 subdivisions according to technologies, making it relatively easy to find information of particular interest to a company or organisation. Because of the value of patents, true owners are almost always recorded, and inventors must also be identified by law.
     
    So, patent literature in particular can be a rich source of information about the competition. For example, publicly available information can identify:
    • Who they are
    • Who they are collaborating with
    • Who their key technical people are
    • What their current technical focus is
    • What technology they are no longer interested in
     
    Publicly available information can also be used to: monitor developments in a particular field; identify technology at the leading edge, or gaps in the existing patent field (in terms of technology and geography); track the rate of investment in a technology; and identify the names and addresses of individuals with specific expertise, or potential commercial or academic collaborators.
     
    As an example of the competitor information readily obtainable, here are the results from a search of a public patent database for Australian patents and patent applications in nanotechnology, using the prefix “nano” in the title, abstract, or claims of the patent, or classified in the nanotechnology IPC class B 82.
    The above graphs show the most prolific inventors, co-inventors and patentees among this data set. The standout inventors are David Moy of Hyperion Catalysis and Professor Chad Mirkin of Nanosphere and Northwestern University.
     
    In business, do you know who is on the technological league table with you, and how to play those competitors so that you will win the premiership cup?
     

    Karen Sinclair is a patent and trade mark attorney and a Principal of Watermark, assisting Australian companies to successfully commercialise research on an international scale, and in IP management. Email [email protected]
     
    Geordie Oldfield is a patent and trade mark attorney with Watermark. His areas of expertise include nanotechnology and chemistry, with a special interest in competitive intelligence. Email [email protected].
     
    The power of IP-related competitive assessment in defining a business strategy is often overlooked. You should be able to answer some crucial questions: Who are your competitors? How, when and where are they kicking goals?
     
     

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    Stop former employees ripping you off
     
    At a time when workers swap employers like crime kings swap broads, protecting your business secrets takes a special kinda skill.
     
    To stop former employees using confidential information, Griffith Hack’s Wayne Condon says you gotta meet four crucial requirements:
     
    You will have to identify with specificity (and not merely in global terms) what you allege to be confidential;
    You must show that the confidential information is truly confidential (and not, for example common or public knowledge);
     
    You must show that your former employee received the confidential information in circumstances that made it clear that the information was confidential; and
    You will need to show that there is an actual or threatened misuse of the information.
     
    The last requirement is usually not difficult to establish!
    Self-evidently, if information comes about as a result of very little effort and is relatively mundane, it will not be possible, at law, to protect that information. If the information was widely-known (albeit perhaps not in the true sense public) it would be difficult to protect that information from a former employee’s use. If a person could duplicate the information with comparatively little effort, the information may not be protectable. If no steps are taken to protect the information during the period of employment or afterwards, the company cannot later complain about the misuse of that information. The way your industry competitors deal with and protect confidential information may also be relevant to your own obligations in dealing with and protecting your information.
     
    It should be standard procedure for businesses to put a written confidentiality agreement into effect for new employees likely to become privy to confidential information belonging to the company or who may create confidential information in the course of their employment. The agreement needs to provide a specific regime as to how that confidential information is dealt with after the termination or expiry of employment.
     
    Businesses should also have a protocol for identifying information as confidential as soon as it is created, informing employees with access to the information that it is confidential and should be treated in accordance with company policy. It will be important for businesses to identify only information that is truly confidential. Labelling everything with a “confidential” stamp will, in fact, have the opposite result – the term “confidential” will become meaningless.
     
    The moral of the story is:
    • Act early – protect your confidential information with a written confidentiality arrangement specifically drafted for current circumstances and imposed at the time of employment – not once the horse has bolted.
    • Act consistently – put in place a standard operating procedure for dealing with, maintaining and protecting confidential information and document the process so your senior managers are aware of it and comply with it.
    • Act regularly – conduct regular “confidentiality audits” to determine that the business is still identifying confidential information and informing employees how they should deal with confidential information, assuring your confidentiality agreements and standard operating procedures are current and relevant to the current conduct of your business.
     

    Wayne Condon is a principal of specialist IP firm Griffith Hack, Melbourne. He has over 28 years experience advising business on the protection and enforcement of their intellectual property rights. Phone (03) 9243 8340 or email
    [email protected]
     
    To protect confidential information you need to readily identify exactly what you allege to be confidential and why. The more general the information, the less likely it is a court will prevent a former employee using that information.
     

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    It’s all about the image
     
    When the cops are collecting suspects for a line-up, you don’t want to stand out from the crowd. In business, you do. That’s why they invented the trade mark. Russell Waters of Phillips Ormonde Fitzpatrick explains how to keep your corporate identity safe, strong and outstanding.
     
    Pretty much every organisation is concerned about its image, and rightly so.
    A professionally developed brand identity will seek to reflect aspects of your organisation’s personality and to differentiate it from the competition.
     
    Brand can develop a value; in some cases a significant one. It’s generally accepted that the world’s most valuable brand is Coca-Cola. This brand is valued in the billions of dollars.
    An organisation’s brand and reputation will be associated with its company or business name, logos, product and brand names and other imagery.
     
    A surprising number of new ventures register a business or company name and, having registered that name and possibly a domain name for internet use, commence trading without considering the trade mark implications.
    When a company or business name is used to identify the source of goods or services, it is being used as a trade mark.
     
    There have been a number of cases of businesses commencing trade using a trade mark that is already in use or that has been registered by another business operating in the same general commercial area.
    Assuming a trade mark does not infringe a registered or other pre-existing trade mark right, use may afford the owner some protection at common law.
     
    The trade mark owner may be able to take action at common law to prevent a competitor using the same or a similar trade mark. However, it is generally easier to take action in relation to a registered trade mark.
    The fact that the newer business may have registered a company, business and/or domain name provides no rights to use that name as a trade mark.
     
    Of course, it may not be for some time (after investing in their brand) that the newer business receives a letter from the owner of a trade mark alleging that a trade mark is being infringed.
     
    In one case in 2000, the well-known Virgin Group obtained an injunction against Virgin Financial Services Group Pty Ltd, which had business and company names registered but was not related to the Virgin Group.
     
    The action was taken on the grounds of alleged trade mark infringement, breach of the Trade Practices Act and common law “passing off”.
     
    The injunction was granted and Virgin Financial Services Group was forced to withdraw advertising and cease using names incorporating the word “virgin”. This was no doubt a costly exercise.
     
    The moral of the story is to check that anything you may use as a trade mark is not going to infringe the rights of others and ideally to register it as a trade mark.
     

    Russell Waters is a partner of Phillips Ormonde & Fitzpatrick. He is head of the trade marks group of the firm. Phone (03) 9614 1944 or email
    [email protected].
     
    If you offer superior goods or services to your competitors, or similar goods or services at a better price, you want these differences to be identifiable. That’s where your brand comes in.
     
    The fact that a newer business may have registered a company, business and/or domain name provides no rights to use that name as a trade mark.
     


    SPONSORED FEATURE

    The patent process – too slow?
     
    They say good things come to those who wait. That may be true for a crim in the clink or a gumshoe tailing a beautiful broad. It also applies to patent protection. Ray Hind from Davies Collison Cave explains.
     
    Of the raft of intellectual property rights currently available, patent protection is the principal method of protecting technology-based innovation against copying by others. Often it is the only protection available. It can take some years to obtain a patent. Here we explore why this is so and why it can be an advantage to patent owners, rather than a disadvantage.
     
    The Patent Process
     
    The process itself is relatively straightforward and although there are certain administrative complexities, these usually occur ‘behind the scenes’. Broadly speaking, the procedure involves the filing of a patent application with the Patent Office, examination by the Patent Office to check whether the invention claimed in the application is sufficiently different from the prior technology (‘the prior art’ in patent terminology) and provided it is, the patent is granted. There is opportunity in the process to make changes in the wording to the patent claims to distinguish the invention if examination finds close prior art. The examination process itself may represent just a day’s work for the Patent Office Examiner. Yet, it can take three to four years from filing the application to obtain patent grant.
     
    Why the significant delay?
     
    One reason is that Patent Offices around the world are overburdened with a backlog of applications awaiting examination. The US Patent Office, for example, has over 700,000 applications awaiting examination.
    Another reason is that the patent process itself allows an applicant to build in delays into the procedure.
     
    Is the delay a bad thing?
     
    Generally speaking, no. Some applicants assume they cannot use their invention until the patent is issued. Wrong! The critical factor is the filing of the application, and disclosure/use of the invention after filing will not damage its validity. Although enforcement cannot take place until the patent is issued, most countries, Australia included, have provisions for retrospective enforcement against infringements prior to patent issue.
     
    However, there can be significant benefit in the delay. Innovation is rarely static. Within limits, it is possible to amend the claims of a patent application so that subsequent developments fall within its scope of protection. In the case of a potential infringement while the application is pending, again within limits, the claims are able to be amended to ensure that the infringement is ‘caught’ by the patent when it issues. Most patent attorneys would have made a seemingly small change, one word perhaps, in a patent application to provide a more certain position on infringement, an amendment impossible after issue of the patent.
     
    Significant financial benefits can flow from the delay. Substantial costs will be incurred in obtaining patent protection for an invention in significant overseas markets and often, the longer the period over which those costs can be spread, the better, especially when the applicant is a start-up company strapped for funds and trying to raise funds from investors.
     
    There are usually more advantages than disadvantages arising from delays in the patent process. For those cases where the delay is causing serious detriment for an applicant, the patent systems of many countries, Australia included, have mechanisms by which a speedy grant can be obtained to permit early enforcement of the patent.
     

    Ray Hind is a partner of Davies Collison Cave with over 30 years experience as a patent attorney. He is also a Senior Fellow, Faculty of Law, The University of Melbourne and an Honorary Associate, Faculty of Law, Monash University.
     
    The examination process itself may represent just a day’s work for the Patent Office Examiner. Yet, it can take three to four years from filing the application to obtain patent grant. Why the significant delay?
     

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    Gettin’ the copyright
     
    If one thing’s for certain in this joint, it’s automatic copyright protection. You create it darlin’, and it’s all yours. Just make sure you check the fine print. Rebekah Gay from Shelston IP tells us why.
     
    Most people know that copyright protects written content, but are less clear about the precise requirements for copyright protection, and just what amounts to copyright infringement. Here are the basics.
     
    In Australia, there is no system of registration for copyright. Instead copyright protection is automatic for something that is original, and which has been recorded in a “material form”. For example, written text, computer programs, databases, paintings, films and sound recordings may be protected. However, copyright does not protect an underlying idea. For example, the idea or plot for a television programme is not protected by copyright unless it has been written down, filmed or otherwise recorded.
     
    Telephone directories, business directories, catalogues, product lists, event guides, programmes and timetables may be protected by copyright, even if they are a compilation of information derived from another source, provided sufficient effort has gone into the gathering, selection or arrangement of the information. For names and slogans, however, trade mark registration is better than copyright protection. Mass-produced items are often better protected by registered designs (protecting the appearance or shape of articles) or patents (protecting products that are functional, new and inventive).
     
    The copyright notice – usually consisting of the © symbol, the owner’s name and year of publication – is not needed to ensure copyright protection in Australia. However, using this notice makes people aware you are claiming copyright and may discourage misuse.
     
    In general, the person who creates a copyright work owns copyright. However, if an employee creates the work in the course of their employment, their employer owns copyright. A third-party contractor usually owns and retains copyright in work they produce, unless a written contract re-assigns it.
     
    Regardless of any re-assignment, the person who creates a copyright work has certain moral rights. These include the right to be attributed for their work, the right not to have their work falsely attributed and the right not to have their work treated in a derogatory way. Moral rights cannot be assigned, but the creator may provide consent for their work to be used in specific ways.
     
    When it comes to copyright infringement, the legal test is whether someone has reproduced, published or adapted the whole or a substantial part of a copyright work without the permission of the copyright owner. The concept of “substantial” is qualitative not quantitative. If a person takes an important or distinctive part of the original work, even if that part is a small proportion of the original, it may still constitute copyright infringement. There are certain exceptions to copyright infringement, but these are limited and difficult to rely on where a copyright work is used for commercial purposes.
     
    For directories, databases or other compilations of information, where significant skill and labour has gone into the collation of information, it may be copyright infringement to reproduce that information, even where the information has been rearranged. Where the skill and labour relates to the presentation and arrangement of the information, reproducing the information may not amount to infringement but reproducing the way the information is arranged might. In both cases, if a person independently assembles and presents the information, copyright infringement is unlikely.
     
    Overall, copyright can be an important intellectual property asset for any business, and care needs to be taken to ensure that it is properly understood, identified, managed and protected.
     

    Rebekah Gay is a partner with Shelston IP and has practised exclusively in the field of intellectual property for a number of years, assisting clients in the strategic enforcement and protection of all intellectual property rights.Email
    [email protected]
     
    The information contained in this article is not legal advice. If you do have a legal enquiry you should talk to a Solicitor or Trade Mark Attorney before make a decision about what to do.
     
    The copyright notice – usually consisting of the © symbol, the owner’s name and year of publication – is not needed to ensure copyright protection in Australia. However, using this notice makes people aware you are claiming copyright and may discourage misuse.
     
    When it comes to copyright infringement, the legal test is whether someone has reproduced, published or adapted the whole or a substantial part of a copyright work without the permission of the copyright owner.