Due to the innovation patent’s limited impact in assisting SMEs, the Productivity Commission recommended abolishing it in 2016, and the federal government agreed to this recommendation in August 2017.
However the phasing out of the innovation patent does not mean that there are no effective avenues for SME’s seeking to protect their IP. Here are some alternative strategies and tools for SMEs.
One of the most effective ways to protect an invention is still with a patent. A patent is a right granted for any device, substance, method or process that is new, inventive and useful. IP Australia (the Australian Patent and Trade Mark office) examines patent applications that aim to protect inventions in Australia. Patents can cover a wide range of inventions, from highly complex pharmaceutical substances to much simpler, but inventive, devices. An example of the latter is the Cricket Cooler.
Provisional patents can be a great option for SMEs, due to their initial cost. The fee to apply for a provisional patent is $110 plus the cost of having a patent attorney draft your patent specification. We always recommend seeking professional attorney advice when applying for a patent because drafting a patent specification that will survive any challenge is a skilled task. However, pick an attorney who has familiarity with your product or sector and ensure you get a clear statement of the relevant fees upfront.
Provisional patents give you a priority application date, which establishes the fact that you are the first person to file a new invention with us. While a provisional application doesn’t provide you with the protection of a full patent, it does give you up to 12 months to consider your options and test the market before deciding whether to proceed with a full patent application. Think of it as a placeholder. It’s also confidential. Your invention or idea isn’t published until you file for a full patent.
Engaging an attorney
IP Australia has recently developed the engaging an attorney toolkit. This is a step-by-step guide on how, why, what and when to engage your patent attorney. Additionally, most attorney firms who are members of the Institute of Patent and Trade Mark Attorneys (IPTA) will provide an initial 30 minute consultation free of charge. SMEs should utilise this as it gives them an opportunity to test whether the attorney has the appropriate knowledge and focus for their needs.
SMEs can also protect their ideas via non-disclosure agreements. When discussing ideas with investors, employees, contractors and other businesses, there is always an element of risk if IP hasn’t been protected and if a non-disclosure agreement hasn’t been signed.
Ensuring non-disclosure agreements are signed is a good a habit SMEs can adopt to protect an idea, especially when discussing it with someone external to your business. Please note that many investors won’t want to sign these agreements as it may stop them from investing in a similar idea in the future. In these cases it’s important to keep the patentable material to yourself.
Keeping company announcements private if you want to register IP
Articles in the media can go a long way in helping a company gain the exposure needed to succeed. However, especially for patents, it’s important to keep your inventions private until an IP strategy is in place. If your product receives coverage, either through a media publication or even your company’s website, this could inhibit your ability to obtain patent rights. Patents need to be ‘new’, so if a patent examiner can find publicly available information that suggests the invention is already widely known, the product may not pass this test.
The basis of a well-considered IP strategy is research, and one way to do this is through the IP NOVA system. It is a visual search engine that is completely free and its data consists of registered patents, trade marks and plant breeder’s rights from IP Australia’s database.
Searches can be done based on location, industry or field of invention. Once you become familiar with the tool it can be used to do things such as identify key trends in technology development, look for collaborators (or look out for competitors) in specific technology fields and search for key sources of technology expertise.
Patenting will not be the best choice for all SMEs. Each company should consider the most effective strategy for protecting IP for its particular circumstances. Trade secrets, for example, will be a preferable strategy for some companies. The key thing is to consider the importance of IP to your business and the best strategy to protect it.