Wednesday 26 March 2008, The Australian National University, Canberra
Innovation ANU organized a talk by Dr Andrew Blattman from SPRUSON & FERGUSON Patent and Trade Mark Attorneys as the second event in a series of staged business and commercialization development seminars. The talk highlighted issues in intellectual property management within an academic R&D context.
Dispelling the commonly prevalent notion that patents and intellectual property merely applied to”tangible inventions”, Dr Blattman made a cogent presentation on what constitutes potentially patentable material. A patent is neither a ticket to fame nor guaranteed commercialization success. Rather it is a contract for a limited monopoly for a tangible representation of an artifact of intellectual value. The onus of enforcing the monopoly rests on the agency filing for the patent, which is of variable duration in different legal jurisdictions around the globe. If shrewdly exploited, Intellectual Property (IP) can be leveraged to realize a strong competitive advantage.
IP can be viewed as a tradable commodity. “Small players” can actually leverage IP to enable negotiation and cross-licensing when needs and rights clash in a business context. Since IP can be summed up to be pretty much an organization’s most valuable asset, we would not be too fallacious in making a rather sweeping generalization that an organization may afford to lose money, but it cannot afford to lose IP.
IP management encompasses various avatars and forms (trademarks, designs, copyrights, trade secrets, and patents).
Trademarks can cover different attributes such as sound, smell, shape and color – attributes which may be perceived as branding and enhancing the value of the product under consideration. Trademarks can be extended for perpetuity and are a very powerful tool for market penetration and brand recognition.
Neither copyrights protect against exploitation of the process via “independent” discovery, nor do trade secrets against “reverse engineering”.
A patent is the broadest form of IP protection. It provides a temporary monopoly, an exclusion right to prevent others from exploiting the invention. In Australia, the details of the patent are published no later than 18 months after first filing.
However, filing patents is an expensive, extended and time-consuming process. In spite of this, their use as an arsenal is invaluable. The cost of initial research is always quite high, and a patent can provide a monopoly for commercial exploitation to recoup the associated developmental expenditure. It is interesting to note the absence of permission for “experimental use” of an existing patent in Australia.
What exactly is “patentable” material varies between jurisdictions. However, software is patentable in most areas, as are business processes and any invention that may have a “technical application”.
The first step in filing a patent application is identifying the inventive step, if a patent has scope for commercial applications, then the market views it to be worthwhile. In Australia, “absolute novelty” (novelty in all global jurisdictions) is a necessary prerequisite. The “inventive step” is the differentiating characteristic of the patent from prior art.
Protecting novelty and inventive step in an academic context is a tough balancing act, since the academic process usually incorporates a “publish early and often” disclosure paradigm, and publication is deemed to be full-disclosure without any accompanying protection.
Dr Blattman then outlined the “best practices” for successful IP management.
A successful approach to capturing the inventive step in research involves regular IP audits, early involvement of domain experts (for review), and spreading the associated risk with mitigation measures in place.
The importance of prior-art search was reiterated – it’s always crucial to know about the competition.
Though it is best to file early and often, prohibitive costs often recommend a tempered mean with the claim being sufficiently broad in scope.
However, waiting for the patent process to run its due course does not necessarily preclude publication of results. Publishing within the scope of the application may be practiced prudently. In a university environment, a student is usually the owner of IP related research.
Recommendations for successful IP management involve strategies such as
- aiming for broad coverage in the patent
- building an incremental patent portfolio and
- defining a set publication policy.
In a nutshell, successful IP management is:
- understanding of the technology and the market
- having a sound commercialization strategy
- identifying and understanding the landscape early on, and
- building a portfolio on this basis.