Skip to 0 minutes and 3 seconds STEPHEN GRAY: We’ve got a situation here where Inventive Irene has come up with something that she thinks might have commercial value. She’s got a number of options. If she has drawn her little device on a piece of paper, then actually she may have copyright in the drawing as an artistic work. And she might think that copyright’s a very attractive option for her, because she doesn’t need to go to the expense and trouble of taking it to an office and having it registered. She’s got quite a long term of protection, the life plus 70 years, which is a lot longer than she’s likely to get under the other intellectual property regimes.
Skip to 0 minutes and 38 seconds And so she might think, well, why should I bother weave with other forms of IP protection? I’ll just get copyright protection for my drawing. She does have to be a little bit careful about that, particularly if she’s thinking of marketing her idea in a commercial context. So she’s got other options. One would be to seek designs protection for the design of this little device that she’s invented. And she could do that by taking it to the designs office in Australia and seeking designs protection. That form of protection is aimed at the visual features, the appearance of the objects, not the underlying idea or the invention that the object incorporates. Another option for her might be to seek patent protection.
Skip to 1 minute and 25 seconds And that would be seeking protection for the invention. She’d have to show there that her thing is new, that it incorporates an inventive step, and that nobody else has invented something similar before. If she wants to take it to a business partner or somebody who’s got money perhaps and can help her market this idea, she wants to be sure that that person won’t simply take it and run away with it and not acknowledge or reimburse her then she would have to be careful to show that it’s confidential and so one idea might be to make it absolutely clear to the person that she’s talking to that she has a confidential idea and that all the discussions that she has with that person are in confidence.
Skip to 2 minutes and 12 seconds So if you are approaching somebody and you’re a little bit worried as I guess anybody would be in that sort of situation, then you want to make it clear to them that you are able to protect your rights. One way to do that might be that if you’ve already got a patent for it, if you’ve already filed a patent, then that makes it very clear to the person that you’re serious about protecting your rights. But an alternative might be to ask them to sign a confidentiality agreement. Again, that way you’ve got clear evidence that all your discussions are in a confidential situation and that that invention is what you are claiming is yours until such time as you sell it.
Skip to 2 minutes and 53 seconds Certainly, look online for other examples of confidentiality agreements, but most certainly you need to think carefully yourself about what it is you’re claiming confidence in. If you’ve got an idea for a movie, then you might want to be as specific as you can about exactly what your movie idea is. If you’ve come up with an invention, you’d want to be as specific as you can. And that would mean your own independent work and I guess writing down and reducing it to, I guess, as much technical detail as you can what it is that you’re climbing confidence over. Patent protection, it’s under the patents legislation in Australia. And you need to go. There’s a form of registration.
Skip to 3 minutes and 34 seconds You need to go to the patents office. And you’ll get it only for a specific period. Normally it would be 20 years. Or you can get some shorter forms of protection for innovation patents still. And you need to show that you have an invention, that it’s something that is new, that it embodies an inventive step. So you need to satisfy the requirements of the patent legislation. After that period, then, it’s in the free market for others to explore. If Irene has an image with a wasp and a line through it and the words “Buhzz Ohff,” then that does sound very much like something that she could seek trade mark protection for.
Skip to 4 minutes and 11 seconds I guess she would be seeking to market her invention. Hopefully people would come to associate that image and that work with her product. That would mean that that image would have commercial value to her, just as the McDonald’s logo and other things have to those large companies. And so she would apply for trade marks protection. And she’d need to show that, again, satisfy the requirements of the trade marks legislation. The Trade Marks Act protect signs, and that means not just visual things or woods, but also it’s been extended to even to colors and smells and some things that same quite outside the traditional realm of what you might think is protectable.
Skip to 4 minutes and 53 seconds In one well-know case, for example, the chocolate company Cadbury sought protection for the color purple. There was another case in which the petrol company sought protection for the green color that was associated with their business. That doesn’t mean that if they’ve got trade mark protection, a child can’t draw a green picture or a purple picture. What it means is that they have protection for the use of that symbol or that mark associated with their particular type of business. So it would mean that in the case of the chocolate company, it would mean that no confectionery manufacturer could use that color in association with its business, because of the risk of confusion amongst consumers.
Skip to 5 minutes and 35 seconds But it wouldn’t stop ordinary use of that color. It wouldn’t even stop commercial use of that color in a context that was outside that for which the chocolate company had got its protection as long as there was no risk that people would be misled. If Irene has invented something in her garage and she doesn’t have a lot of money to go out there or know-how perhaps and she wants somebody to help her, I suppose she’s seeking a business partner that’s got the kind of skills and perhaps the financial backing that she doesn’t have. Certainly she can look at government schemes, at money that might be available to startup companies or to help people that hopefully government encouragement.
Skip to 6 minutes and 12 seconds So she would look around for the sorts of schemes that might help her. But she would likely also be seeking a trusted business partner. One strategy might be to actually publicise her invention as widely as possible to begin with. So we’ve got TV shows even in Australia where she might decide to simply go public with her invention and hopefully people would come forward. I guess obviously she’s taking a risk in behaving in that way if she hasn’t sought some sort of intellectual property protection beforehand. And people that are thinking along these lines may be well advised to actually go and look at the intellectual property protection options first before they go too far in divulging their inventions to the world.
Skip to 6 minutes and 53 seconds If Irene wants to sell her product overseas, then she will need to think carefully about the potential for somebody in those foreign countries to be taking her product and using it without commercial benefit to her. She could seek, if she has a patent for that product in Australia, she could seek reciprocal patent protection in other countries. So Australia, like many countries, is a signatory to international patent treaties, which are designed to make it easier to get patent protection in different countries once you’ve got it in Australia. But certainly if she’s looking at countries where maybe patent protection is quite weak, then she would be hesitant, I should imagine, about marketing her product in those countries.
Skip to 7 minutes and 42 seconds But yes, there is reciprocal protection available for many forms of intellectual property, including copyright and patent protection. Intellectual property creators, IP creating countries, and I guess that’s most significantly the United States have been quite assertive for many years now in asserting protection for their products, the products of their inventors in other countries.
Skip to 8 minutes and 13 seconds And so through what’s called the trade related aspects of intellectual property agreement, they have put pressure on other countries, developing countries, to harmonise their intellectual property laws with the United States as far as possible, which means essentially passing similar legislation and putting in place enforcement mechanisms to ensure that the products of US inventors, US creators are protected in those countries to the same extent as they are in the United States. Greedy Garry has copied Irene’s device and is selling it online cheaper than Irene. She will be looking to assert her intellectual property.
Skip to 8 minutes and 53 seconds So if she has a patent over her product, then she would clearly so for it for breach of patent, which essentially means that he has produced, he’s marketed something that substantially reproduces the essential integers of what’s called in patent jargon, the essential integers of her original invention. The same would apply for designs protection or even copyright. The test is very, very broadly, if he’s marketed something that’s very similar to hers, then she could see for breach of the IP protection that she’s got. If Garry, the infringer, is based in Australia, then that obviously makes it considerably easier for her to sue. She can sue under Australian law.
Skip to 9 minutes and 36 seconds And she’s likely to have her– if she’s based in Australia, she’s likely to have her patent protection in Australia. If he’s based overseas, then that will make it more difficult. If he is based overseas but selling his products in Australia, then he could certainly be breaching Australian law. It might be practically difficult to chase him, though, if he’s based in America or Pakistan or somewhere else. But there is also at least the option of suing him under the law of the place where he’s based. There are some alternatives to the standard forms of intellectual property protection. One of those we’ve actually already mentioned and that’s confidentiality.
Skip to 10 minutes and 15 seconds Another option might be the common law tort of passing off, which essentially applies when you’ve passed off your goods or yours– as somebody else’s. If you are associating yourself in your advertising, making it seem as though you’re associated with the Olympic movement or something like that, then you might potentially be liable under that common law tort of passing off.
Case study 2 analysis: Inventive Irene
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