What is Intellectual Property?
- Think -> Branding
- Create -> Write or draw
- Design
- Identify and meet a need
- Dream -> New invention
- Develop -> Improve
What is your Intellectual Property?
Internal processes
•Customer lists and contact details
•Licensed rights
- Trade marks
- Corporate branding
- Copyright
• Formal IP assets: patents, designs, registered trade marks, plant variety rights, geographical indications
Why is IP important?
- Competitive advantage
- Better products
- More popular branding
- Cheaper production methods
- Trendier looking styling
- > 80% of the value of your business may be its intellectual property
- Engineers are paid predominantly to produce IP
Why is IP Strategy is important
- Leverage IP to earn money
- Block competitors
- Avoid legal infringement risk
Who can help me with my IP?
- IPONZ
- Patent Attorneys
- Lawyers
Who is IPONZ and what to they do?
- Government agency
- Impartial administrators of relevant legislation
- Register particular IP rights after examination
- Provide general information regarding IP –not advice
What do IPONZ examine, grant and register intellectual property rights under?
the Patents Act 2013
the Trade Marks Act 2002
the Designs Act 1953
The Geographical Indications (Wines & Spirits) Registration Act 2006
the Plant Variety Rights Act 1987
Who are Patent Attorneys?
Registered Trans Tasman Patent Attorneys
•Specialist qualification
•Technical engineering or scientific expertise
•Competence
Who are Lawyers and what do they do?
• General commercial advice
• Legal agreements
- Employment
- Confidentiality
- Joint ventures
- Licences and franchising
• Disputes and Enforcement
- Assist you in resolving disputes relating to IP ownership or infringement
- Represent you in legal action before the courts
• Some specialist IP lawyers also assist with protection of trademarks and designs
What are Some Types of Intellectual Property?
⭐ ⭐ ⭐
- Trade secrets / confidential information
- Patents –protect new products and processes
- Copyright –everything you draw or write
- Designs –eye appeal of product
- Trade Marks –brand protection
- Plant Varieties
- Circuit Layout Designs
- Geographical Indications
What is a patent?
⭐ ⭐ ⭐
- An exclusive right, granted by the government, to stop others from making, using or selling an invention for up to 20 years.
- Given to the patentee in exchange for disclosing the invention.
- A valuable asset that can be brought, sold, licensed or transferred like any other property.
What is the bargain with patents?
⭐ ⭐ ⭐
Full disclosure of the new invention in exchange for 20 year monopoly right
What are the Exclusive Rights of patents?
⭐ ⭐ ⭐
A patent allows you to stop anyone else from: • Manufacturing • Selling • Using • Importing • Marketing • Licensing
Why are patents attractive to investors?
- Demonstrates serious technical confidence
- 20 year monopoly right
- Ability to license to existing companies overseas
- Marketing tool: “our patented system”
- Inventor recognition ‐CV and LinkedIn profile
What do patents protect?
How things work –function, not form
What can a patent can be granted for?
⭐⭐⭐
- A new product
- A new process of manufacturing
- An improvement to an existing product or process
- Improvements in computer technology (but not software)
- A new chemical compound
- Electrical devices and circuits
- A new method or process relating to the testing or control of an existing manufactured process
• NB –there are exceptions to patentable subject matter
Discuss patents involving computer programs as inventions
• A computer program is not an invention
• To the extent that it relates to a computer program as such.
• Meaning the actual contribution made by the alleged invention lies solely in it being a computer program
- a new and improved way of operating a washing machine that gets clothes cleaner and uses less electricity is an invention
• Taking into account:
- the substance of the claim and the actual contribution it makes:
- what problem or other issue is to be solved or addressed:
- how the relevant product or process solves or addresses the problem or other issue:
- the advantages or benefits of solving or addressing the problem or other issue in that manner:
- any other matters the Commissioner or the court thinks relevant.
Briefly outline the Māori Advisory Committee and their purpose
- Knowledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori protocol and culture)
- To advise on whether:
- an invention claimed in a patent application is derived from Māori traditional knowledge or from indigenous plants or animals; and
- if so, whether the commercial exploitation of that invention is likely to be contrary to Māori values.
What are the Main legal requirements around patents?
⭐⭐⭐⭐⭐⭐
- Novel –never been done or written about before
- Inventive –not merely obvious in light of what has been done before
- Useful –specific, credible, and substantial utility
Patents –Number One Rule?
⭐⭐⭐
“Keep it secret; keep it safe”
• A Patent Application must be filed before:
- Any non‐confidential disclosure
- Sales (or offers for sale)
- Commercial use
• “Grace period” introduced by CPTPP from 31 December 2018
- NOT recognised in most other jurisdictions
Explain advice around Keeping the Secret
• Misuse of confidential information
- Information of a confidential quality
- Obligation of confidence
- Unauthoriseduse
• Written agreement best evidence
- “NDA” / “Confidentiality Agreement” / “Secrecy Agreement”
- Also brings in breach of contract
• But beware “NDA” contracts that sometimes include clauses relating to ownership
When you need a licence?
⭐⭐⭐
- Any time you use someone else’s IP
- Do not assume they have given permission
- Being on the internet does NOT mean you are allowed to use or copy their IP
- Use of stock images
- Check what you are and are not allowed to do under a particular licence (e.g. no commercial use)
Access IP as Licensee?
- Avoid infringement of Licensor’s IP (e.g. patent)
- Permission to use IP
- May require payment of a royalty
- Negotiate access to support and improvements
- May be bundled with other supply agreements
- Enforcement against third parties
- Exclusive or non‐exclusive market access
- Must be able to be terminated after patent expires
Commercialise IP as Licensor?
- Access to markets via existing licensee
- Revenue stream
- Expansion and scale
- Cross‐licensing and collaboration
