Tim Golder, leading intellectual property lawyer and partner of national law firm, Allens Arthur Robinson, defines intellectual property – or IP-rights as intangible rights resulting from intellectual endeavour.
According to Golder, intellectual property law gives you rights to protect the manifestation of ideas, but not the idea itself.
However creating intellectual property doesn’t automatically give you the ability to prevent others from using – or copying them. You may need to take further action to be able to protect your rights.
There are four main types of IP protection in Australia (not including circuit layout rights, plant breeders rights and confidentiality/trade secrets).
When considering the issue of IP it is worth looking at the following guidelines:
• Registering a patent will protect a technical break-through in how something works or new technology – for example, a new lighting technology.
• Registration gives you exclusive right to commercially exploit this breakthrough for up to twenty years (certain forms of patent protection are granted for a lesser period).
• Registering a trademark will protect any “sign” that distinguishes one person’s goods and services from another’s for renewable ten-year terms. A trademark is a “badge of origin” and can include a logo, word, smell, sound, slogan or colour. For example, the distinctive shape of the Toblerone chocolate bar is protected by a registered trademark.
An item infringes a registered trademark when it is substantially identical or deceptively similar and used for the same or similar goods and or services.
• Registration of a design protects its distinctive visual features – not how it works – for a period of up to ten years.
Copyright protects the original expression of ideas. It subsists in works as diverse as novels, poems, computer programs, paintings, musical lyrics, broadcasts and designs for objects.
In Australia, copyright does not require registration and (with a few exceptions where the period of detection is shorter) exists from the time the work is created until the end of the seventieth year after the death of the author or (in the case of works not published before the author dies) the end of the seventieth year after the year of first publication.
However, a copyright notice on a work can act as a deterrent to others and may protect copyright in particular countries.
In terms of global protection, there is automatic protection of copyright in some other countries because Australia is party to international convention. Other types of intellectual property rights must be registered internationally to attract protection. The process depends upon what country you require protection.
Because the legal definitions of IP protection overlap, protection of one design may require a copyright statement and registration of a design and trade mark to protect a branding strategy or logos. It may also require strategic planning for international commercial exploitation. A number of parties may be involved.
And this doesn’t take into account any licensing or contractual negotiations.
Golder suggests the following pragmatic steps before you make your designs public:
“Before designers publicly display designs they should see a patent attorney or lawyer just once and ask the following: Is IP protection available? Is it necessary? Is it cost effective?... and make informed decisions that affect the value of your hard won intellectual assets.”
Golder suggests that you ask yourself, “Am I being adequately remunerated for giving the client the right to adapt this design and use it anywhere in the world and to stop me, the designer, from using it?”
This raises possibly the toughest questions of all – how to balance the expense of rights registration (and enforcement) with commercial pressures; how to negotiate IP rights ownership with an actual or potential client.
Anecdotal evidence abounds of designers assigning intellectual property rights to clients with no premium or simply not having the experience to know how much to ask for in licensing negotiations. Designs that are included in tender document packages, copied and cheaply manufactured with little or no attention to detail.
One solution may be in the method of fee calculation. If fees are formulated by time charge out rate alone the designer could be missing out.
It is during initial meetings where a fee structure is discussed that the designer has the opportunity to raise issues of IP ownership transfer and/or licensing. The designer can gauge any reaction early in the negotiation and can tailor a strategy accordingly.
An experienced, commercially savvy patent attorney or IP lawyer will be able to advise you about negotiating tactics.
Golder suggests it may be possible for your lawyer or attorney to draft a clause that makes someone think twice about copying your design.
Chris Connell, with over twenty years experience designing finely detailed furniture, product and interiors, bemoans the paucity of vision that values a ‘funky’ look over carefully considered design. Why drink designer coffee sitting on a copy chair?
Connell points out that if designers simply become copyists they devalue themselves as well as their own profession. Clients don’t end up with the special pieces they wanted. Manufacturers, many of them local, lose jobs.
An awareness of your intellectual property rights is also critical in protecting your business.