Home' Forge : Vol 1 No 1 Contents 64 // FEATURE
Protecting your ip
In Australia, there are two types of
patents: standard and innovation. A
standard patent provides a longer
term of protection – usually 20 years
(pharmaceutical patents might have
a longer term). An innovation patent
has a term of eight years, providing
a cheaper option that is quicker
and easier to obtain. In order to be
patentable, an invention must relate to
patentable subject matter, be new and
useful, and involve an inventive step.
Being aware of trademark and patent law
Awareness of trademark and patent law
is important for creating intellectual assets
including trademarks, patents, designs,
copyright, know-how and trade secrets,
and managing and extracting value
from these assets. Being aware of the
intellectual property (IP) rights of others
IP considerations for new businesses
Registering a trademark provides a
monopoly of unlimited duration, simplified
enforcement, a defence against infringement,
and geographical coverage, and prevents
competitors from using your mark (unlike
a company or business name registration,
which does not have any proprietary rights).
Trademarks allow value to be captured in an
asset that can be licensed, bought or sold.
It is important to identify your IP,
because one product can be protected
by more than one IP regime. Do
market research before deciding on
trademarks and commercialising a
product in order to avoid using the
trademarks of others.
Remember, if you disclose your
invention to the public before filing
a patent application, you may not be
granted a patent. Seeking advice
early is also important, since it is
usually not possible to obtain IP
What can and can’t be patented?
In Australia, an ‘invention’ is a concept
with a long history, and could be thought
of as an artificially created state of affairs
providing a new and useful effect in
a field of economic endeavour. This
concept of invention is flexible and can
encompass new technologies as they
develop. Court decisions considering
particular inventions and technologies
allow laws to change over time.
Software patents and ‘gene’ patents
are both hotly debated in the media. In
Australia, isolated nucleic acids (e.g.
DNA) are currently patentable, although
the High Court is currently considering
whether isolated DNA is patentable.
In general, ‘software’ patents are available
in Australia, provided they meet the
requirements of being an artificially created
state of affairs of economic significance
and are not mere schemes, abstract ideas
or information. Entrepreneurs should talk
to a patent attorney about the specifics of
their invention, as different laws apply in
Accelerating the commercialisation of
A useful start is to consider questions
that investors, business partners and
potential licensees will be asking.
For example, what is unique about
your IP? What are the logical further
developments? Will the technology
address the needs of the market? What is
the proposed revenue model?
Another important question is how
much money is required and what
sources of funding exist. The Australian
Government provides funding for all
stages of a business’s life cycle, including
IP costs. For example, the Research
and Development Tax Incentive fosters
research and development in Australia,
Export Market Development grants
include grants for international IP costs,
and the Accelerating Commercialisation
program also allows for IP expenditure.
It’s a good idea to talk to your patent
attorney or business advisers about
avenues for business support. The
Accelerating Commercialisation program
also offers access to experienced advisers
who can help entrepreneurs address
the challenges of commercialising novel
products, processes and services.
Challenges in protecting IP
Because one idea or product may be
protected by different IP regimes, seek
advice from the outset. Create a business
plan with respect to IP, and evaluate the
potential worth of IP against the cost of
obtaining it. In many fast-moving fields
(such as apps), the time frames for patent
protection might be less attractive than
obtaining a first-to-market advantage.
Entrepreneurs often want to pitch
ideas to investors or partners,
but should not divulge too much
information. Information sharing
should take place in confidence, and
entrepreneurs should follow up verbal
agreements in writing.
Frequently, start-ups rely on handshake
agreements between the founders and
even early investors, but having written
agreements in place as early as possible
is worthwhile; the honeymoon period
doesn’t last forever.
Mark Wickham is a patent and
trademarks attorney in the Life Sciences
and Chemistry group at Phillips
Ormonde Fitzpatrick in Melbourne.
Mark mentors at the Melbourne
Accelerator Program, the University
of Melbourne’s startup incubator, and
lectures at the University of Melbourne
on intellectual property issues
By mark Wickham, Senior aSSociaTe, PhilliPS ormonDe FiTzPaTrick
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