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Carel Smit

c/o Biophile Pty Ltd

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This website does not contain legal advice. Always consult a pro.

© 2010 - 2019 by Carel Smit - Biophile Pty Ltd ACN: 617 079 259

HOW TO PROTECT IP IN AUSTRALIA

Helpful ideas to help you protect your intellectual property (IP) and develop an IP strategy for your business.

1. Identify your IP

Your new business may have a wealth of new ideas and creative output which can and should be captured as Intellectual Property. From your brand to an innovative new chemical process, there are guaranteed to be things that differentiate you from your competitors.  As your business grows, so too will the importance of these intangible assets. In the 21st century, you cannot afford to become a commodity.

2. Keep Your Idea Secret

Keep your idea confidential until it is protected. If you’re talking to others about your idea, use a confidentiality agreement to prevent them from disclosing your idea without permission. An IP professional can prepare a confidentiality agreement for you.

If you are interested in obtaining a patent or design, you need to safeguard and maintain secrecy until you have filed your application. You may determine that keeping your invention a secret is better than applying for a patent and having to disclose the invention's details. Protection in this manner is known as a trade secret.

For example, the drink formula for Coca-Cola has remained a trade secret for generations. There is no patent protection, and therefore no onus on the company to publicly disclose the recipe. Nor is there a limit of 20 years to its protection. Trade secrets work best where the product is difficult to reverse engineer or replicate, and the knowledge can be protected with confidentiality agreements.

3. KNOW your options

Understand the different types of IP and the advantages and disadvantages of each one. Patents protect inventions, design registration protects their look. A registered trade mark protects brand names, logos, original sounds and scents, and even aspects of packaging.

4. Make sure your idea is new

Search international and local patent and design databases to make sure your invention and/or design is new. Also search the local trade mark and company name databases to ensure your brand is new. You also 

For trade marks, you can use the Australian trade mark search, known as ATMOSS.

For patents, you can use the Australian patent search, known as AusPat.

For designs, you can use the Australian designs search, known as ADDS.

For Plant Breeders' Rights, you can use Australian plant breeder's rights search.

You should also search for new business opportunities and competitor activities.

5. REGISTER YOUR INVENTION OR BRAND

Protect your idea using the IP system to register a patent, trade mark, design or plant breeder's right (PBR). However, make sure you consider the risks and the benefits of registered and unregistered rights.

Also ensure that, when registering a patent for your idea, you include as much detail as possible. An example of this (cited on the IP Australia website) is of Prof Ian Frazer and Jian Zhou who developed a vaccine for HPV - human papillomavirus. They regsitered a provisional patent application in the early 1990s and a few days later they spoke about their research at a conference in the United States. Shortly after that a patent application was filed in America for very similar research by another group of research. There were several court battles, but Prof Frazer won due to the amount of detail included in their original patent filing.

6. Be cautious in commercialisation

Is possible, construct a prototype of your invention. You don't need this for your patent application, but it is useful if you want to approach prospective funders of your idea. The better they can visualise your idea, the better your chances of getting it to market with their help. Make sure you first have a non-disclosure agreement in place before speaking to anyone other than a patent attorney.

As mentioned above, make sure you keep your invention secret until you've lodged a patent application, as making it public or taking steps towards commercialisation prior to lodging a provisional patent application could render your patent invalid.

7. PLAN YOUR BUDGET

Keep track of all your costs so that you have a good idea of how profitable your venture needs to be to recover costs. This may include costs associated with prototyping, legal costs, idea registration costs, and marketing costs. 

In some cases, it is possible to obtain a tax refund for your R&D costs, but make sure you discuss this before hand with someone skilled in working with these types of rebates.

8. KNOW WHO YOU'Re GOING TO BE SELLING TO

Make sure you know who your potential customers are going to be. Know the landscape well and understand the likely consumers, purchasers, potential licensees, investors, manufacturers and distributors. This will help you work out your unit cost and should give you a basis to see if your product or service is competitive.

9. Get business know-how

To ensure you have the best chance to commercialise your idea you need to be able to work with other people who have the skills that you don't have. You'll also need to brush up on your business skills. Make use of support groups such as inventors' associations, your local small business enterprise centre, or government agencies that can help you.

10. WHAT IS YOUR "GO TO MARKET" STRATEGY?

Once you have protected your ideas, the options are endless.  You can make and sell the product. Alternatively, you may end up selling your patent (i.e. your protected invention) to a company for a lump sum. The most common way in which IP is commercialised is by licensing it to a third party, who has to pay you a royalty to use your protected idea. Get professional advice before entering into contractual agreements with third parties.

11. Beware of infringement

You are in charge of policing your idea. This is not the job of the government or your patent attorney (although it is wise to instruct your patent attorney to do a regular "watching search" to see who else has patented inventions or filed trade marks in your field). In other words, make sure you do regular checks to see who is infringing your IP. Infringers can impact your market share, ruin your profits, whileshoddy imitations can ruin your reputation.

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