Australia: Beware of the backyard patent attorney (or amateurs in IP law)

Last Updated: 17 September 2014

There is some truth in this quote, though perhaps it would be kinder to replace "amateur" with "well-meaning individual without the necessary skills and experience". The point is that often skills and experience are required to do the job properly, and that proceeding without them can cause problems which become expensive.

There are many myths and misconceptions regarding intellectual property law that seem to be fuelled by well-meaning amateurs – the backyard patent attorneys as we have called them. Relying on these myths and misconceptions can spell disaster for any business, but particularly for a new startup with limited capacity to pay for such mistakes.

Myth #1 – I can safely sell my new product because I didn't copy anyone else

Patent, design and/or trade mark rights can be infringed regardless of whether you copied. They are different from copyright. Copyright infringement does require copying, although the copying could be unintentional or subconscious.

Myth #2 – I can safely sell my new product because I have an intellectual property right

Patent, design and trade mark rights give you the right to stop others doing certain things. These rights do not give you permission to, for example, make, use and/or sell the product covered by your patent.

Let's imagine that you improve upon Lisa's patented product. You may well be able to obtain patent protection for the improved version of the product, but not be allowed to make the improved version if it is also covered by Lisa's patent. In this case, nobody can make the improved version unless you and Lisa co-operate.

Myth #3 – It's illegal to copy new products

Generally speaking, aside from the copyright, patent, design and trade mark systems, copying of products is allowed. From an economics perspective, it's a good thing. It results in increased competition and lower prices for consumers.

Copyright is automatic (i.e. there is no need to apply for it), but in Australia it is generally ineffective once a product is produced in commercial quantities.

Patent, design and registered trade mark rights are not automatic. If these rights are of interest, you must apply for protection. Generally speaking, it is better to apply sooner rather than later. For design and patent protection, applications for protection should (and often must) be filed whilst your product (or process) remains secret.

Myth #4 – That's not clever enough for a patent

The degree of innovation required to obtain a valid patent is often overestimated. Based on this misunderstanding, many potentially valuable patent rights are not pursued. The result is lost profits when competitive products (and/or processes) enter the market.

To obtain a valid standard patent, only a "scintilla of invention" is required. This merely requires a non-obvious variation. For innovation patents, the bar is even lower. Innovation patents can validly cover obvious variations of existing products and processes.

Myth #5 – A change of 10% avoids infringement

Patents include claims that define their coverage. In much the same way that a mining claim marks out an area of ground, a patent claim marks out an area of technology. Assessing infringement involves comparing the wording of the patent claims with the potentially infringing product or process. Some patents are worded so that it is very difficult to conceive of a competing product that avoids the patent's coverage. Other patents might easily be designed around. It depends what the improvement is and how well the patent was written.

Design registrations cover products that are substantially similar in overall visual impression to the registered design. This assessment must be made from the point of view of the "informed user" and depends upon the context of design. The amount of change necessary varies significantly from product to product.

Trade mark registrations cover the use of deceptively similar trade marks in relation to defined goods and/or services. Two trade marks are deceptively similar if a potential purchaser would be caused to wonder if the products came from the same source.

Myth #6 – Getting proper advice on this stuff will cost a fortune

Intellectual property professionals are typically happy to have a brief, free of charge discussion over the phone regarding any issues of concern and the options for and applicable costs of advancing the situation.

Even if funds are tight, we strongly encourage you to take advantage of this. What would be the costs to your business if a more established competitor copied your latest product? What if you released a national advertising campaign only to receive a threatening letter asserting that you are infringing a competitor's trade mark? If funds are tight, an experienced professional should be able to comment on the best "bang for buck" options to guard your business against copying and/or reduce the risk of infringing others' rights. You are then in a position to assess cost vs risk.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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