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Chapter16 intellectual-property


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  • 1. ELEC3017: Electrical Engineering Design Intellectual Property
  • 2. References• Fraser Old: Protection of Intellectual Property, – Notes on class web-site• John Kenny, “Patent nonsense,” Business Review Weekly, June 19-25, 2003, pp. 34-41.• – Home page of the “World Intellectual Property Organization”•
  • 3. Intellectual Property• Term coined by John Locke in 17th C.• Includes – patents, trademarks and copyright• Protected by WIPO – World Intellectual Property Organization – Organization within the United Nations – Currently 182 member states (inc. China) – Manages a system of treaties
  • 4. What is Copyright?• An unregistered right• Comes into effect immediately• Sufficient to mark your copyright work with the copyright symbol © followed by your name and the date• Does not protect ideas. Only protects the expression of ideas in a piece of work
  • 5. Copyright Protection applies to …• Original literary works – novels, instruction manuals, computer programs, articles in newspapers, …• Films (video, cinema, etc.)• Original musical works• Other original artistic works – paintings, engravings, photographs, technical drawings, diagrams, etc.
  • 6. Copyright Implications• Protection is quite weak – Only protects “copying” – 3’rd party can independently create a similar work (e.g., software) • may need to be able to demonstrate that creation was independent – Software companies create “clean room” environments for this purpose • closed teams with no access (current or prior) to the original copyrighted software they are trying to emulate
  • 7. Trademarks• A trademark is a type of “badge” to indicate the source of goods or services – can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these• “House marks” are trademarks used to identify the company as a whole – e.g., FORD, MICROSOFT, …• “Model marks” are trademarks associated with a specific product – e.g. LASER, WINDOWS, …
  • 8. Importance of Trademarks• Trademarks are considered “repositories of good will” – Damages imposed (by a court of law) for infringement can be very substantial.• Tademarks are valuable property – The trademark COCA COLA appears on the company’s balance sheet as an asset valued at many BILLIONS of dollars • perhaps worth more than the company’s tangible assets
  • 9. Importance of Trademarks (ctd)• Mars Corporation spends more than US$20 million a year registering and protecting trademarks – BRW article• Trademarks can be lost – Use it or lose it – a competitor may apply to have it unregistered if not used for a few years – Don’t let it become part of everyday language • Always use trademarks as adjectives, not nouns • THERMOS, BAND AID, XEROX, VASELINE, …
  • 10. Trademarks and Registration• Unregistered trademark has some protection – can sue a competitor for “passing off”• Registeration offers stronger protection• Unintentional infringement of trademarks – May need to do an extensive search – One way to avoid problems is to use geographic names – these are difficult for others to trademark – Trademarks can be re-used for unrelated products • e.g., Apple Computers and Apple Music• Company names not automatically trademarks
  • 11. Patents: Introduction• A patent is a right granted in relation to a device, substance, method or process which is novel, inventive and useful. – Unlike copyrights, patents are designed to cover ideas (more than one embodiment).• Patents are property in the eyes of the law – each patent granted in Australia cordons off intellectual territory and assigns it to the applicant (e.g. a foreign corporation) – likewise, Australians can apply for patents (intellectual territory) overseas
  • 12. Patenting Costs• To protect a single patent in Australia and the U.S.A. only – may cost $30,000 to $40,000 over lifetime• To obtain protection for 2 or 3 related patents in Australia, Japan, U.S.A. and Europe – may cost ~ $200,000 over patent lifetime• Legal costs in an infringement lawsuit – typically exceed $1,000,000 • could exceed $10,000,000 and go on for years!
  • 13. Patent Rights• A patent is a monopoly – granted for a limited duration • 17 to 20 years, depending on the country – a 3’rd party’s liability for infringement is not affected by independent conception. – patent is granted to the first to apply • not necessarily the first to invent • but, U.S.A. is different in that it has special “first to invent” provisions.
  • 14. Patent Rights (ctd)• Gives you the right to sue an infringing company/individual for damages – this is a kind of negative right, in that it does not inherently contribute to the development of products based on the patent• In many cases, a patent is not sufficient to develop and sell products based on the invention – you may require processes which are patented by other parties – very common in complex systems
  • 15. Philosophy of Patents• Patents are designed to give protection to the inventor of new technology – that will lead to a product or process with significant long-term commercial gain• In return, patent applicants must share their know-how – by providing a full description of how their invention works – patents intended to discourage trade-secrets• This information becomes public – can provide a basis for further inventions by others
  • 16. Patents Gone Mad• # international patents growing rapidly – from 2,600 in 1979 – to about 110,065 in 2003 • each of these represents patents in multiple countries -- ~8.5 million national patents in all• A successful application means the patent examiner has found no objections – this does not mean the patent will survive an infringement lawsuit – examiners routinely miss important prior art – trend is to file patents with very broad claims • tries to cover apps which inventor has not yet envisaged – rejected patents sometimes re-filed immediately with minor mods, hoping for a different examiner
  • 17. Building on other Patents• Many patents build on others – novel ways of implementing a broader invention described by an earlier patent – improvements to an existing process – combining existing inventions • not sufficient for a patent in all countries• Required only to show “inventive step” – should not be obvious to a “person skilled in the art”, given the existing knowledge available at the time of filing – ultimately a subjective test
  • 18. Is One Patent Enough?• Patents become public knowledge – Allows others to patent novel improvements or implementations of your invention • This allows others to obtain monopoly rights on important variations/incarnations of your ideas. • May block you from exploiting your patent in the future• To protect a fundamental new invention may require several patents – With a sufficient network of patents it may be possible to manufacture & sell products based on your invention, without licensing technology from others
  • 19. Mistakes to Avoid• If you demonstrate, sell or discuss your invention in public before you file a patent application, you cannot get a patent. – includes publication in any publically available form, including placing information on the internet – includes incorporation of the invention in any product available for sale • even if not obvious from the outside• You may talk to employees, business partners or advisers about your invention but – only on a confidential basis – written confidentiality agreements are advisable• Be wary of signing NDA’s requested by others – can later be used to claim you stole their invention
  • 20. Patent Exploitation Strategies• Large firm – cross-licensing – patent treaties – alternative technology to skirt around competitors’ patents – avoid licensing fees – might have many seemingly trivial patents• New startup company (examples) – patent portfolio to support single product range – IP-only firm – licensing & litigation is everything – Hope to be bought out by IP-hungry giant
  • 21. What Cannot be Patented?• Purely mental processes cannot be patented – e.g., artistic creations, mathematical models, plans or designs.• What about an ASIC layout? – easily protected by copyright – can be protected as a “registered design” – registered designs concerned with form and appearance, not fundamental ideas • the David Jones pattern, design of a chair, …
  • 22. Patents and Software• Software itself is protected by copyright• A software algorithm, however, can be patented – at one point this was difficult to do – now commonly accepted, but – the algorithm must still be novel, inventive and useful, and – must be described in the context of a processing platform (machine)
  • 23. Got to here by Friday Week 9 Elements of a Patent 1. Field of the Invention – often just one paragraph 2. Background of the Invention – could be very extensive 3. Summary of the Invention – overview of how it departs from existing background 4. Brief Description of Drawings 5. Detailed Description – main body of the patent; must be done well. 6. Claims – very important 7. Abstract – used when search patent databases
  • 24. Description vs. Claims• The description section in a patent represents the public disclosure of the invention to others – should be sufficient to enable a person skilled in the art to implement it• Claims are the main basis on which infringement actions will be fought – they should, of course be related to the description
  • 25. Claims Structure• A typical patent contains 2 or 3 top-level (independent) claims – these must be sufficiently specific that they do not include something which already exists, while being as general as possible• Subordinate claims progressively refine these top-level claims – done by explicitly referencing previous claims – cover specific embodiments of the idea • prevents others from subsequently claiming those embodiments as novel improvements on your invention. – serve as a second line of defense if your top-level claims are rejected by an examiner or court of law
  • 26. Example Claims: [Text only; no equations or refs to description]Who am I?1. A method for transmitting data from a given source to a given recipient, involving the steps of a) multiplying each data value by a corresponding signal waveform, b) accumulating said multiplied signal waveforms, and c) delivering said accumulated waveform to said recipient.2. A method according to Claim 1, where the data values appear sequentially at regular time instants.3. A method according to Claim 2, where the signal waveform associated with a data value is formed by delaying a single pre- determined signal waveform by an amount equal to said data value’s time instant.4. …11. A method for recovering data values transmitted according to the method of Claim 1, involving the steps of …
  • 27. Provisional Application• Inexpensive – filing fee ~$100 – legal costs (not mandatory) ~$1000• Gives you 12 months to consider the commercial worth of your innovation – subsequent patent can claim the provisional filing date as the priority date• Be careful to include a full set of “sample claims” in the provisional application – failure to claim something in the provisional may cause you to lose the advance priority date for that aspect of the invention
  • 28. To patent, or not to patent?• Provisional is a cheap (short term) form of insurance• Can file a PCT (international patent) – allows you to defer the costs of obtaining patents overseas, while you decide which foreign markets should be protected• Keep your innovation as a trade secret? – have to assess risk of someone obtaining your invention through industrial espionage or reverse engineering.
  • 29. To patent, or not to patent?• Another alternative is to openly use and publish details about your innovation. – prevents someone else obtaining a patent for the same thing – but allows your competitors to freely use your innovation for their own benefit.• Cost of defending your patent can be huge – 80% to 90% of patent infringement cases which are brought to court are found against the plaintif • partly because many patents are wrongly issued – Most infringement cases settled out of court • pay $1 million to avoid legal costs of $2 million.
  • 30. Summary• Patents are very important – monopolies – similar to property ownership – coming up with an invention all by yourself does not give you the legal right to exploit it.• Key element of international trade – major part of Australia-U.S.A. FTA in 2004• Patenting is expensive – not patenting may be much more expensive