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The Australian consumer market is dominated by overseas originating designs and this is reflected in the design applications filed at the Australian Designs Office.  In 2018, more than 7,500 design applications were filed in Australia and approximately 55% of these claim convention priority from overseas design applications, and the other 45% were either non-convention applications or divisional applications.  Divisional applications can also claim convention priority indirectly.

What this means is many Australian design applications are based on the drawings of overseas design applications, and may therefore contain multiple embodiments, sometimes as many as 10 or 20 embodiments to the same product.  If the same drawings are filed in Australia without taking this into account, the Designs Office will raise a formalities objection, giving the applicant 2 months to overcome the objection.  Otherwise the application lapses.

Over the next few months, we will release papers on some of the techniques used by BOSH IP to optimise the number of registrations required from a best practice perspective and from a commercial perspective.  We provide our Top Tips and recommendations in each edition.

Multiple Embodiments equals Multiple Designs

It is common practice for drawings of a design application to include some portions in solid lines and other portions shown in dashed lines (or broken lines).  But the reasons for using dashed lines vary.  For jurisdictions like the United States of America and Japan, the portions shown in dashed lines can be disclaimed from the features defining the monopoly.  In other jurisdictions like China, dashed lines not permissible at all.

Dashed lines are allowed in Australia but they cannot be disclaimed.  A design is assessed from the overall appearance of the product, including solid lines and dashed lines.  The portions shown in dashed lines cannot be ignored, but rather they are afforded less weight.  Embodiments having different portions of solid and dashed lines will therefore have different scopes, and the Designs Office will require that separate registrations be obtained for each embodiment of different scope, unless an alternative filing technique can be found.

Below are three embodiments of a drink bottle having different portions of solid lines and dashed lines.  Each is therefore different in scope.

In addition to the way in which the product is illustrated in the drawings, applications may include a Statement of Newness and Distinctiveness (SoND) which influences the importance of the features.

Embodiments of different scope will require separate registrations, but how do I get the most out of the Australian design registration procedure?  

Can multiple design applications be filed? Answer:  YES… BUT….

When separate protection is warranted for each embodiment, a so called “multiple-design application” can be filed for:

• multiple designs of the same product, such as the drink bottle example; or
• multiple designs of more than product, if the products belong to the same Locarno class.

A point to note about “multiple design applications” is that there is no discount in the official fees based on the number of designs, and that separate registrations are ultimately issued for each embodiment after a formalities check, which can occur within 4 to 6 weeks after an application has been filed.  This means that each embodiment is handled on a case-by-case basis post registration, including requests for substantive examination, renewal fees, and recording changes of ownership, to name a few examples.

So the answer is YES a multiple-design application be filed, BUT there is often little or no benefit in filing a multiple-design application, and we often recommend filing separate applications from the outset for each embodiment.

The advantage this provides is that we have direct control of the figures in each registration, the Statements of Newness and Distinctiveness can be adjusted for each application, sometimes the title can be selected for each embodiment, and there is no difference in the official fees.

Can all of the embodiments be included in a single application? Answer:  YES…BUT…

YES a single application containing multiple embodiments can be filed, BUT ultimately, a selection must be made on which embodiment to retain, and which to make the subject of a divisional application.  A single application containing multiple embodiments can be advantageous if the applicant wants to:

• defer the decision on whether each embodiment needs protection; and
• defer the cost for registering each embodiment.

If the applicant is yet to be briefed on the application procedure, the response period of 2 months allows sometime, albeit limited, to discuss whether registrations are need for all embodiments.

In consultation with you, we can provide recommendations on which embodiments to prioritised in view of a range of factors, including:

1. the state of development of the prior art,
2. functional features of the design that may be important from a practical perspective, and
3. importantly, visual features that distinguishes the design from competitors’ designs.

 

In addition to prioritising which designs to protect, it is possible to customise applications to better suit Australia so that registrations for each embodiment may not be required.  These and other factors will be considered in more detail in the coming editions.

Our approach

At BOSH IP we optimise the number of design applications required, with a view to the best practice in Australia and the commercial relevance of the design.

Our patent attorneys are recognised experts in design protection. For specific advice, please contact us at:

byron.bowman@bosh-ip.com

nadia.odorico@bosh-ip.com

nick.hunter@bosh-ip.com

adrian.sneary@bosh-ip.com

 

 

We often find ourselves in conversations with clients who have disclosed their products and ideas without considering the IP implications.  Typical examples include companies publishing press releases for upcoming products, researchers publishing papers and small businesses discussing projects with potential partners.

While it is certainly not best practice to think about IP protection after disclosure, depending on the circumstances it may still be possible to protect your IP and leverage value into your business.

Over the next few weeks we will be looking at how we help companies create value in their business when they thought they missed the boat on IP.  This week we are looking at the grace period provisions in Australia for filing patents.

Grace Periods

Unlike many jurisdictions, Australian patent law allows disclosures by the applicant before filing to be disregarded in the consideration of patentability in certain situations.  This is known as a ‘grace period’.

Grace periods are not unique to Australia.  The United States, Canada and Japan all have versions of grace periods.  However, in Australia there are several specific considerations which require the grace period provisions to be navigated carefully.

Here is a brief summary of the grace period provisions in Australia and our Top IP Practice Tips if you find yourself having to rely on them:

What does the law say?

Australian patent law allows that disclosures made:

• by the applicant;
• with the consent of the applicant; or,
• without the consent of the applicant when the information was obtained from the applicant;

are disregarded in the assessment of novelty, inventive step and innovative step for a complete application filed by the applicant within 12 months of the disclosure.

Some important points to remember:

1.  Disclosure date triggers the filing date for a complete application

The disclosure triggers the time period for filing a complete application.  For a PCT application entering Australia, the filing date is the filing date of the PCT application.  Therefore, if a priority filing is made soon after disclosure you will not be able to use the full 12-month convention term for filing the complete application from the priority filing since that complete application will then be filed more than 12 months from the disclosure date and so outside the grace period.

2.  The grace period does not establish a priority date

Importantly, independent third-party disclosures are not excluded from consideration.  Such disclosures will be available for novelty and inventive step consideration if disclosed before your filing date.  If you decide you want to file in Australia, do it quickly after your disclosure to avoid intervening publication by third parties.

3.  The circumstances around the disclosure are irrelevant

As long as the disclosure was made in line with the provisions above, the reason for the disclosure is irrelevant, for example whether it was intentional or unintentional.

4.  Grace periods do not apply for registered design rights in Australia

Grace periods apply to complete patents only.

Practice Tips

We do not recommend relying on the grace period provisions in Australia, reserve them for emergency cases only.  However, if you find yourself having to rely on grace period provisions here are our Top IP Practice Tips:

1. If you decide to use the grace period, file your patent application quickly after disclosure. Remember, your disclosure does not trigger a priority date and so independent third-party disclosures before your filing date are not excluded from consideration.  File before anyone else discloses.
2. Set up your reminders for filing the complete application from the disclosure date.
3. Create a detailed note of the circumstances of the disclosure as soon as possible. Include details of where and when the disclosure was made, by whom, as well as the content of the disclosure.  The patent office will not ask for this if they don’t discover the disclosure, but it may be useful in the future if the patent it is ever contested.

If you have disclosed your product and you are concerned you have missed the opportunity for IP protection get in touch and we’ll help you find opportunities to protect the value in your IP.

 

Intellectual Property (IP) is the most valuable asset of many businesses.  Follow these IP Top Tips to ensure you have your IP bases covered and to position yourself to drive value from your IP:

1.  Think about IP early

Resources and finances are always stretched in the early stages of any business.  But it is critical not to ignore management of your intellectual property.  Early errors in IP management, such as public disclosure, IP contamination and loss of control of your IP, can jeopardise your business model and business valuation.  Speak to a patent attorney at an early stage to help avoid these problems.

If you have any nagging concerns about your previous actions flag them to your patent attorney immediately.  It can be easier to navigate problems if they are addressed sooner rather than later.

2.  Develop an IP strategy before committing to IP assets

 It is important to develop an IP strategy before jumping in and spending cash on specific IP rights.  This gives you confidence in the actions you take and any investment you make in IP.

Work with your patent attorney to identify your business’ key intellectual assets and how they support your business.  You can then make decisions on how best to protect and leverage your assets in a way that underpins your business model and drives value in your business.

Remember, different IP approaches can achieve the same business objective.  So be realistic and choose an approach to IP that you are comfortable with.   Be clear about what you are doing and why.  This will give you confidence in your IP spend and any actions you take.

3.  Clearance check your brand

Being forced to re brand due to trade mark infringement can be a marketing disaster.  Run a freedom to operate search on your brand before launch.  We recommend extending your search internationally to reduce the risk of infringement when you expand overseas.  Once you are clear, register your domain name, trade mark and social media accounts.

4.  Fix IP ownership issues immediately

It is critical to be able to demonstrate a clean chain of ownership of your IP assets.  If you cannot prove that you own your IP assets, then it is difficult to attribute any business value to them.  The uncertainty also raises questions around who the rightful owner is and whether your business has the right to use the IP at all.  Uncertainty around IP ownership can be complicated to resolve and can terminate a deal.

You need to be able to identify:  What is the IP?  Who created it?  When, and in what circumstances?  Under what agreement?  And can you prove that the answers to each of these questions results in the IP being owned by your business?

Generally, the default position is that the creator owns the IP, so ensure that arrangements are in place to transfer IP ownership to your business, whether you are dealing with employees, contractors or anyone else.

It is essential to keep clear records against products and projects, have the IP assigned to the company in a formal agreement, and record the assignment of any registered rights (including trade marks, designs and patents) on the official registers.

5.  Beware of contamination of IP

Have you included contributions in your products from third party sources?  IP contamination can impact your ability to exploit your product and the cost of exploiting it.  Both of which can undermine your business model.

For example, open source software may appear to be a cost-effective solution for software developers but be vigilant of the associated licensing obligations.  If you must use open source software, record where it is used and the licence terms – you should expect to be asked for this information during any product due diligence.  Brainstorming with third parties is another dangerous avenue for IP contamination unless there are clear IP provisions governing those conversations.

If you must introduce third party contributions into your products ensure that you understand the implications and whether these fit your IP strategy and exploitation model.

6.  Be committed to IP management

Commitment to your IP strategy is key.  Remember, your strategy has been developed specifically to achieve your desired outcomes. When circumstances dictate that you need to deviate from your plan consult your patent attorneys immediately to understand the business implications and options for navigating any potential problems.

Our expert patent attorneys at BOSH IP have considerable experience of advising startup businesses and preparing them for investment.  Please contact us for more information on how we can help you cover your IP bases and position yourself to drive value from your IP.

 

IP strategy is a buzz word in our industry today.  It sounds nebulous, imprecise, fluffy.  So, what is it and why do you need one?

Intellectual property extends well beyond legal rights – it is the intellectual assets of your business.  It can be your technology, brand, designs, trade secrets, data, people, development processes, partnership agreements, customer relationships.  The list goes on.  These are all intellectual assets that contribute value to your business.

IP strategy is your plan for identifying, protecting, managing and leveraging your intellectual assets to deliver your business objectives.

Too often a so-called IP strategy is too limited in focus.  We find that many clients jump straight into filing a patent application without asking why, and without considering the boundaries within which that patent application delivers value.  Effective strategy is much more involved.

For example, for a company developing groundbreaking technology, an IP strategy is not “filing a patent application”.  Effective IP strategy is the process that allows you to identify that a patent application could be filed.  It enables you to decide whether to file (and publish) or whether to keep the information confidential.  It is the scope within which  the patent application is useful – including technology coverage, lifetime, geographic coverage, relevance to your products and partners – and, importantly, it defines the use of that patent application.

For a data company, an IP strategy is not “keeping data confidential”.  It is process for identifying the confidential data, and retaining and managing the data.

Once you move outside the boundaries of your strategy you risk failing to achieve your business objective.  It is time to review your strategy and update it if necessary.

Equivalent business outcomes can be achieved in different ways; for example, a company requiring exclusivity around a technology might achieve this by filing, having granted and enforcing a patent covering the relevant technology.  But equally, the same result might be achieved by keeping the workings of the technology trade secret, or by negotiating exclusive arrangements with suppliers, or by effective marketing campaigns, or by a combination of these and other factors.  Effective IP strategy planning identifies these options and selects an appropriate approach based on the risks and benefits of each one.

Commercial landscapes and intellectual assets are not always predictable. Products lose traction, market dynamics evolve, patent applications may be refused, and confidential information may be leaked.  These factors don’t mean that your business outcomes need to change, but they may require your strategy to change in order to achieve them.  Your IP strategy needs to be reviewed and updated over time to continue to fuel your business.

Effective management of intellectual assets drives value within a business while mismanagement can wipe away value by losing control of them.  Having a solid IP strategy and a commitment to its implementation ensures that you stay on track to realise the value of your intellectual assets.

If you would like to find out how we can help you develop your IP strategy to deliver your business objectives, please get in touch.

I am often surprised at how few patent attorneys seem to take a genuine interest in a client’s business.  I’m not suggesting that your intellectual property (IP) counsel should be analysing your P&L at the start of any engagement, but they should at least have a strong grasp of your business model and an insight into your market positioning.  It is only by understanding these factors that they can properly advise on your IP options.

Decisions on whether to file a patent application or how to proceed with an application are inherently linked to your business objectives.  IP can provide great business value when it supports your objectives, and potentially zero value when it doesn’t.

To gain true value from your IP you should be regularly assessing the relevance of your IP portfolio with your patent attorneys and making positive decisions to proceed in a way that provides continued value to your business.  Remember that a positive decision is often to do nothing, or to abandon or transition IP that provides no further value.

So, if you feel like your patent attorney is handling your IP in isolation it is unlikely you will be positioning yourself to get the best value from your IP.

If you would like to find out how we can help you use IP to drive your commercial advantage, please get in touch.