PEB 702 ENGINEERING & SOCIETY

LECTURE 3. INTELLECTUAL
PROPERTY

1
OUTLINE
• what is intellectual property (IP)?
• Types of IP:
– patent
– trademark
– registered design
– copyright
• outline the procedures to get protection
• explain the protection that can be obtained

2
WHAT IS INTELLECTUAL PROPERTY
(IP)?
• property of your mind or intellect
– your proprietary knowledge
• creative ideas are valuable and may need legal protection
– for you as an individual
– for a business
• Examples
– An new idea, process, device
– Piece of original creativity
– An image

3
WHAT IF I MAKE MY IDEAS KNOWN?
• If you make your knowledge public by:
– publishing; talking (even socially!)
– advertising; selling
– demonstrating a prototype
• before you seek protection; then you risk losing IP for
some things (e.g. an invention you wanted a patent for)

4
WHAT CONCERNS MIGHT A BUSINESS
HAVE?
• A business built on
– innovation
– designs
• needs to protect the IP rights

5
BENEFITS OF AN IP STRATEGY
• Inventor/researcher reaps the rewards and credit of
their hard work
• Enables further research to take place
• Patents are published so information is not locked up
• You and your idea become attractive to investors

6
WHAT ARE EXAMPLES OF IP RIGHTS?
• creative idea
• clever design
• new plant variety (for a plant breeder)
• electronic circuit
• trade secret
• invention (new thing; new way of doing
something)

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TYPES OF IP PROTECTED BY LAW

• patents
• trade marks
• registered designs
• copyrights

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PATENTS

• Inventions, substance, process, method

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A PATENT
• gives the holder exclusive right, for 20 years, to exploit
(make money from) his/her invention
• requires formal application / registration
• allows holder to authorise another party to exploit it
(presumably for holder’s gain)
• you cannot patent artistic creations, mathematical
models, plans, schemes or other purely mental processes

10
REQUIREMENTS TO OBTAIN A PATENT

• Be new
• Involve an inventive step
• Be a manner of manufacture
• Be useful
• Be undisclosed

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TO PATENT OR NOT TO PATENT?

• Provisional patents
–Quite inexpensive $2000
–Good for 12 months
–Gives you time to consider commercial worth
• Trade secret or confidentiality agreement options
• Costs, security, length of protection
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PATENTS -
REFRIGERATION IN 1868
• Thomas Sutcliffe Mort and Eugene Nicolle Victorian Patent
1139 lodged 4 August 1868

13
PATENTS - SUNSHINE STRIPPER
HARVESTER
• H.V. McKay Victorian Patent 4006 lodged 24 March 1885

14
PATENTS –
SPUN CONCRETE PIPE
• Hume Australian
Patent 4843/26
lodged 22
November 1926

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PATENTS –
VICTA LAWN MOWER
• Mervyn Victor Richardson
• Australian Patent Mervyn Victor Richardson
Australian Patent
8770/55 lodged
2 May 1955
8770/55 lodged
2 May 1955

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PATENTS –
SHEPHERD’S CASTOR
• George Shepherd
Australian Patent 136548
lodged 10 September 1947

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PATENTS –
ORBITAL ENGINE
Sarich Australian Patent
467415 lodged
6 July 1970

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PATENTS –
COCHLEAR’S BIONIC EAR

• Patent applied for 25/10/78

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TRADEMARKS
• words
• symbols
• pictures
• sounds
• smells

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A TRADEMARK
• distinguishes goods or services of one trader from
those of another
• valuable marketing tool
• registered owner has exclusive right for 10 years
with option for 10 year renewal
• renewal will keep it indefinitely

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TRADEMARK -
BRYMAY REDHEAD
• Filed On 17/12/80

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TRADEMARK -
UNCLE TOBY’S SUPER SERIES
• Filed On 16/01/90

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TRADEMARK -
DEEP HEAT
• Filed On 23/12/68

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TRADEMARK -
CHESTY BONDS
• Filed On 23/04/56

25
TRADEMARK -
POPPY LIPSTICKS
• Filed On 12/12/94

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REGISTERED DESIGNS; IT IS THE
APPEARANCE THAT MATTERS
• Design refers to the features of shape,
configuration, pattern or ornamentation which
can be judged by the eye in finished articles.
• Design registration is used to protect the visual
appearance of manufactured products. To be
registered, your design must be new or original.
• A registered design gives you the exclusive and
legally enforceable right to use, license or sell
your design.

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A REGISTERED DESIGN
• distinguishes by:
–shape
–configuration
–pattern; ornamentation
• registered owner has exclusive rights, up to 16 years
–make
–use
–sell

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REGISTERED DESIGNS -
ELECTRIC JUG DESIGN
• Date of Registration: 2 June 1949

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REGISTERED DESIGNS –
SEBEL METAL FRAME CHAIR DESIGN
• Date of Registration: October 1957

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REGISTERED DESIGNS –
DUNLOP TYRE DESIGN
• Date of Registration: 22 October 1987

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REGISTERED DESIGNS –
TOY BUILDING BLOCK DESIGN
• Date of Registration: 7 June 1994

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REGISTERED DESIGNS –
TAP SEALING DESIGN
• Date of Registration: 3 May 1962

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COPYRIGHTS
• originality in arrangements of:
–words (literary work; lecturer’s notes)
–notes on staff (musical arrangement)
–paint on canvas (art work)
–drama (movie film script; TV & radio
broadcast)
–computer program
–multimedia material
34
COPYRIGHT LAWS
• are detailed and extensive
• have had to change to try to keep up with changes
in information technology and other developments
• may easily be breached by the uninformed
• give monopoly over the use of the ideas, not the
ideas themselves

35
COPYRIGHTS – TIME LIMIT
• This varies according to the nature of the work
and whether or not it has been published.
– Depending on the material, copyright for artistic and
literary works generally lasts 50 years from the year
of the author's death or from the year of first
publication.
– Copyright for films and sound recordings lasts 50
years from their publication and for broadcasts, 50
years from the year in which they were made.

36
OTHER IP –
PLANT BREEDER’S PROPERTY RIGHTS
• To protect new varieties of plants by giving exclusive
rights to market a new variety or to its reproductive
material
• Administered by Department of Agriculture, Fisheries
and Forestry
• New plants must be distinguishable, uniform and stable

37
OTHER IP –
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

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OTHER IP –
CIRCUIT LAYOUT RIGHTS
• The maximum possible protection period is 20
years.
–10 years from the first commercial
exploitation-provided this occurs within 10
years from creation of the layout-or 10 years
from the year in which it was made, if not
commercially exploited.

39
OTHER IP -
TRADE SECRETS
• know-how
– recipe for herbs and spices (fried chicken)
– ingredients in a cola drink
• commercially confidential information (prior to public
announcement)
– company A wants to acquire company B
– company C has a price deal to sell coal to Japan
• Protected by confidentiality agreement with employee

40
INVENTION AGREEMENTS
• Condition of employment to sign invention
agreement
• Employee agrees to disclose all inventions made
within employers line of business
• Assigns IP to employer
• Employee applies for patents and employer meets
all costs
• Agrees to maintain secrecy
41
CONFIDENTIAL DISCLOSURES
• Firm accepting ideas from outsiders
• Law takes view that these ideas are given in
confidence and therefore need specific approval
to be used
• Ownership of idea can be in dispute
• Unsolicited disclosures

42
HOW DOES THE LEGAL PROTECTION
ARISE?
• some IP rights are automatic (eg copyright)
• some IP rights are only granted after application
and successful examination (eg patent)
• common law action
• Commonwealth laws protect:
–patents; trademarks; registered designs
43
COMMON LAW ACTION
• you can be sued for infringement:
– trade secrets
– passing off trademarks
– breaching confidentiality agreements
– industrial espionage

44
WHY THE PROLIFERATION OF WEB
SITES AND LAW EXPERTS FOR IP?
• Many websites
• why does this area receive so much attention?
• Is it an indication that:
–many breaches occur?
–firms treat it seriously; guard it jealously?
–people fear being sued?
45
SO - I’VE A GREAT IDEA - WHAT NEXT?
• Check http://www.ipaustralia.gov.au/index.html
• before you seek to register it
– maybe someone else beat you to it?
– conduct a search to see if it is really new/unique
– seek help from the IP specialists
– be careful about disclosure

46
SUMMARY OF KEY POINTS - 1
• IP means the property created by your mind that
you should have exclusive rights over
• there is legal protection for IP
• some IP rights are automatic (copyright)
• some IP requires registration to get monopoly
over its exploitation (eg patent)

47
SUMMARY OF KEY POINTS - 2
• avoid prior disclosure if you wish to patent an
invention
• follow the set procedure for obtaining IP
protection for things that require registration
• be aware of automatic protection under common
law for some IP (eg artistic work)

48
KEY TERMS / CONCEPTS
• protection of intellectual property; royalties;
confidential agreement
• patent; registered design; trademark; copyright;
unsolicited disclosure
• patent application; patent attorney; provisional and full
specifications
• artistic work; trade secret
• period of protection; infringement

49
QUESTION BANK 1.
• list ways in which a business might fail to look after IP rights that it ought
to protect
• give examples of and discuss IP that enjoys protection automatically (by
common law)
• outline the process you would follow re IP for a great mousetrap you
invented

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