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Intellectual Property & IP protection

Intellectual Property & IP protection is not an end in itself. In this contribution, John Jacob cannot stress this enough; IP protection should be a means to achieving your commercial aims.

Questions that one needs to ask:

  • What is the nature of your business?
  • What is your market?
  • Where is your market; is it domestic only or overseas as well?
  • Who is your competition? Is your market dominated by a few big players or are there many small and large companies?
  • What's your competitive advantage?


These questions should be addressed as part of a business plan. It is essential that IP is considered when drawing up your business plan. This will ensure that all the IP in your business is properly identified and decisions made as to what kind of IP strategies should be followed to protect your commercial assets.

This article is a synopsis of a talk by John Jacob of Wallingup Research.

John suggested a few do's and don'ts in relation to IP. Firstly, there's the issue of disclosure. Disclosing or publicising your idea to others before lodging an application with IP Australia could destroy any potential for gaining a registered right. This is particularly so with patents and designs. Obtaining a registered design or patent grant is predicated on the basis that your invention or design is new. Disclosing to others before you lodge an application and obtaining a priority date runs the risk that your idea will be regarded as part of the prior art base. So keep it secret at least until you've obtained a priority date from IP Australia. If you do have to disclose your idea to someone, make sure you have a confidentiality agreement drawn up first.

Secondly, and this follows on from the previous point, is the issue of timing. For any of the 4 registered rights, a clock starts ticking, once you lodge your first application with IP Australia. Your application will go through different stages of processing and you have to be ready to proceed to the next stage. If you are not ready then you'll either be up for extension fees or at worse your application might lapse. Therefore, it's crucial before lodging your first application you understand the process thoroughly and are ready to advance your application when it is required.

Thirdly, searching relevant databases before you lodge will help identify any prior art in your area of technology, what IP is owned and by whom. In relation to a patent, a prior art search will also help in the drafting of your patent specification to ensure your patent is worded differently to the prior art.

John likened lodging an application without conducting at least a preliminary search beforehand is like setting up a tent at night, without any light – you are going in blind!

Confidentially and IP Protection

Maintaining confidentiality in a business environment

The basic steps include the following (from IP Toolbox):

  • Clearly, mark all documents containing the information 'confidential'. While this is not the determining factor, a court will take it into account when deciding whether or not information is confidential;
  • Treat the information as confidential by restricting employee access to the information to 'a needs only' basis. More confidential information will only be accessible by senior employees;
  • Treat the information as confidential even at the point of destruction, by providing locked disposal bins for the disposal of any confidential information; and
  • Require all that have access to the information to sign a written confidentiality agreement. A confidentiality agreement will usually involve written acknowledgment by the recipient that the information is confidential. This can be useful in the event that the recipient later attempts to challenge the confidentiality of the information.

The concept of legal confidentiality (from IP Toolbox)

Legal confidentiality is a body of law developed by the courts to protect relationships of confidence and the information disclosed in such relationships. The information is protected for as long as it is remains publicly undisclosed. For confidentiality to be recognised by the courts, the information needs to be imparted as confidential (or told as a secret) in a "relationship of confidence" (eg non-disclosure or confidentiality agreement, employer-employee relationship) and there is actual or potential for real damage to the person imparting the information resulting from unauthorised use or dissemination of the confidential information. Trivial breaches of confidence are unlikely to invoke the protection of the courts. Confidential information will not be protected against misuse if it is disclosed in the product it self by analysis of a product (reverse engineering) to determine its composition and method of manufacture. Protection of a formula under a legal confidentiality agreement could be very difficult if people are able 'discover' the key ingredients of a product by taste or smell, chemical tests or microscope examination etc, without access to the formula that the manufacturer considers to be confidential.

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