13. Intellectual Property

Introduction

Virgina Nichols from New Zealand Intellectual Property Office.

Intellectual property: any fruit of the human intellect.

IP is a catch-all term that includes:

Importance of IP

IP:

~90% of the value of the business can be its IP.

Engineers are paid predominantly to produce IP.

IP Strategy

An IP strategy is important for businesses to:

IPONZ

IPONZ helps businesses, both domestic and international protect the IP rights in NZ. They:

They examine, grant and register IP rights under the:

Registered Trans Tasman patent attorneys have specialist qualifications and interact with IPONZ and overseas office on their clients behalf.

Types of IP

Many types including but not limited to:

Patents

Gives you the exclusive right to stop others from making, using, selling, importing, marketing or licensing your invention for up to 20 years. To own a patent, you must have acquired that right from each and every inventor.

This right is granted by the government in exchange for full disclosure of the invention. The right only exists in each country/region where the patent is granted - you must get protections in every country/region. There is usually a maximum duration of 12 months between starting the patent process and having to decide which countries it will be patented to (Patent Cooperation Treaty).

If it can be easily reverse-engineered, a patent is likely to be useful. If it is a black box, a trade-secret may be more suitable.

Patents are assets and hence can be bought, sold, licensed or transferred.

Patents are attractive to investors as it demonstrates technical competence, gives licensing opportunities, is useful as a marketing tool (e.g. “our patented system…”).

Patents protect how things work: function, not form. This makes it particularly relevant to engineers.

Patents can be granted for:

An provisional patent specification can be submitted to buy time for a complete specification (12 months, extendable to 15 months) before requesting an examination within five years. Within about three months IPONZ will examine the patent, after which there can be a back and forth with the examiner to respond to issues.

Computer Programs

In New Zealand, computer programs are not inventions “to the extent that it relates to a computer as such.”

That is, if the contribution made by the alleged invention lies solely in it being a computer program, it is not an invention.

Fisher and Paykel exception: created a new and improved way of operating a washer machine to get clothes cleaner and use less electricity. The invention isn’t the software but the improved operation of the washing machine.

In determining if it is an invention, the Commissioner or court considers:

Laws related to computer programs vary by country and change over time.

Māori Advisory Committee

Advises if the invention claimed in the patent application is derived from Māori traditional knowledge or from indigenous plants or animals and if so, whether the commercial exploitation is likely to be contrary to Māori values.

Patents must be:

“Keep it secret; keep it safe”

The number one rule for patents. A patent application must be filed before:

There are exceptions e.g. can patent up to six months after disclosing in a gazetted exhibition.

The Comprehensive and Progressive Trans-Pacific Partnership Agreement (CPTPP) introduced a grace period of one year. However, this is NOT recognized in most other jurisdictions.

Keeping it secret: legal action can be taken if information of a confidential quality is disclosed under an obligation of confidence and they attempt to make unauthorized use of it. Written agreements are the best evidence of this (e.g. non-disclosure/confidentiality/secrecy agreements). Note: NDAs may have extra clauses related to ownership, which should be considered separately.

The default position is that if you are employed to create IP, your employer will own it. A good employment contract will have clauses relating to this.

Licensing

You need a license any time you use someone else’s IP: just because it is available on the internet does not mean you have permission to use it.

Accessing IP as a licensee:

Commercializing IP as a licensor:

Copyright automatically projects original works such as artwork, computer programs, written work, and music.

Its protects the particular expression of the idea, not the underlying idea.

Copyright works fall into one of several categories:

Copyright ownership agreements must be in writing, but copyright protection itself is free and automatic (in New Zealand).

This relies on internal record keeping. Files can be lost or overwritten easily so physical printouts may be useful. Proving infringement requires evidence of:

If there is evidence of an independent design process, you can defend against infringement. Unlike patents, copyright is about copying the idea, so coming up with the idea independently does not breach copyright.

Industrial Copyright (NZ only):

The copyright symbol © may be useful as a deterrent, indicating that you are aware of your rights.

Issues:

Design Rights

Design: new or original shape, configuration, pattern or ornament applied to an article by any industrial process or means.

In New Zealand, designs protect eye appeal, not function (this would fit under industrial copyright in NZ) e.g. shape of containers, chairs, spa pools, cars etc…

Design rights are filed with IPONZ, have a novelty requirement and provide up to 15 years of protection (although most aren’t renewed past five years - the design is old by that point).

Trade Marks

Signs that distinguish your goods and service in the marketplace from those of other people.

Trade marks include works, logos, pictures, shapes, sounds, smells, colours, animations, and position marks.

Trade marks to avoid:

Google it, do trade mark checks (IPONZ database), or professional searches before developing a new brand.

Trade mark strategy: