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Is intellectual property something you can D.I.Y?

By Gareth Dixon on Monday, October 10th, 2016

This IPitch guest article was provided by Gareth Dixon of Shelston IP.  Shelston IP is IPitch’s legal and intellectual property partner.

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Intellectual property - or “IP”, is the product of one’s mind for which a set of exclusive rights may be recognised. It’s a nebulous term that is often bandied about by those claiming to be “in the know”. It’s “niche”, but is it really “necessary”?

IP rights are not strictly “property” rights, per se (i.e., one doesn’t “own” IP in the same way as they, for example, own a house); IP rights are intangible. The term “property” seems to relate more to the ways in which IP may be exploited - it may be bought, sold, licensed, etc. Under the various IP laws, owners are granted certain exclusive rights to a variety of intangible assets, such as patents, trademarks, designs, copyright, plant breeders’ rights, etc. These IP rights vary greatly in the protection they provide - and also, from country-to-country. Throw in the fact that often, more than one type of IP may be necessary to fully protect your idea - and one begins to appreciate that IP may indeed be “necessary” - but is it something one can D.I.Y? Is it something that one can simply “add to the pile and do later”?

There’s a saying that doing your own IP is akin to doing your own surgery - “possible”, but not exactly “recommended”… Extending the surgery analogy, timing is often critical - the sooner the better. Start-ups are well advised to seek professional help from the outset.

On the other hand, start-ups generally have sufficient expenses to worry about, without having to consider spending money on “intangibles” such as IP. However, this reality actually betrays the fact that (especially during the start-up phase, when a company generally has precious few capital assets) a company’s most valuable assets will often be vested in its IP.

Intellectual property, per se, is a vast subject full of tricks, idiosyncrasies, deadlines, strategy and pitfalls. It is often a rather tense coming together of law and technology. An IP strategy often characterises a business, rather than the other way around. Whereas no two businesses are the same, neither will be two IP strategies. An IP strategy is thereby an individually-tailored package incorporating the phases of conception, capture, exploitation, enforcement and transaction. IP professionals such as registered patent attorneys take years to train in such disciplines - the “pitch” being that their knowledge and experience stands to enhance a company’s “bottom line” considerably. Put another way, is this something one should risk “D.I.Y-ing”?

Different types of IP require unique approaches. Some, such as copyright and circuit layout rights are automatic; they subsist essentially from the time one puts pen to paper. On the other hand, patents, trademarks, designs and plant breeders’ rights require formal application before one may obtain the legal rights of ownership. Not only this, but IP rights are jurisdictional - registering your rights in Australia does not afford one any protection in foreign countries. Which forms of IP does one need - and in which countries?

Consider, for instance, a patent. A patent is a monopoly right granted by the Crown to encourage invention and commercial exploitation of inventions. A granted patent gives the owner the exclusive right to commercially exploit the patented invention, subject to the existence of prior conflicting rights. In Australia, there are two forms of patent protection; namely “standard” patents (which last for 20 years) and “innovation” patents (8 years). Of critical importance is that a patent is a “negative right” - it doesn’t necessarily give one the right to “do” what they have patented (i.e., prior conflicting rights may exist); but it does give one the right to exclude others from doing that same thing. Although this probably sounds somewhat contradictory, it is nonetheless true - the principles of validity and infringement are very different beasts indeed - opposite sides of the same coin - and not something that one should risk trying to D.I.Y.

IP is fundamentally important for start-ups. As mentioned above, IP is often a company’s most valuable asset - and this is especially true of start-ups, who may not yet have acquired significant tangible assets. With that in mind, it is critically important that start-ups develop strategies to protect their IP from “day one”. Failure to do so may put a business at risk, as may premature disclosure of the related ideas/inventions. A good rule of thumb is to “zip it” - that is, not to talk about your idea or make it public too soon, or you may lose the legal right to exclusive use of your IP. A registered patent attorney can advise further in this regard.

Although the cost of underpinning your future success can be steep, the good news is that you might not have to take out a second mortgage with which to do so. The Federal and State Governments consistently champion innovation as “the way forward” - and both arms of government actually put their money where their mouth is, in making available grants and other practical assistance for precisely this sort of thing.

The harsh commercial reality is that one cannot expect to simply wave their new-and-improved mousetrap patent in the air and have riches heaped upon him. IP is merely a tool - some may say a necessary evil. It doesn’t guarantee commercial success, but it sure helps. On the other hand, if you fail to capture your IP in a manner appropriate to your business, you effectively extend to your competitors a license to not only copy - but to also undercut you in the market. At the risk of sounding alarmist, there are few better ways to ensure that a business fails than to allow your competitors to price you out of “your own” market.

Confused? Don’t be. This article wasn’t pitched at trying and confuse anyone - it was merely to try and get across the message that IP generally isn’t something you can D.I.Y. The take-home message is that despite the hurly-burly and seemingly never-ending minefield of IP and commercial decisions you face as a start-up, you are not alone - help is out there. For the capture, licensing and enforcement of patent, trademark or design rights, a specialist IP or patent attorney firm is the place to go. For commercialisation, capital and marketing advice, there are plenty of experts out there who can point you in the right direction - and many specialist IP firms now have their own commercialisation wings.

Shelston IP offers a free initial consultation for any IPitch start-up looking to secure and exploit their IP. Our firm is a market leader in this highly specialised field. We commit to understanding our clients’ businesses - and focus on providing responsive, commercially relevant IP services and advice that is carefully tailored to our clients’ individual business strategies. We measure our success by the success of our clients in building tangible value and competitive advantage through the effective creation, management, commercialisation and enforcement of their IP assets.

ipitch_partner_logoIf you are looking for legal and/or intellectual property assistance, contact Shelston IP, iPitch’s legal and intellectual property partner, who specialises in working with startups, small businesses and entrepreneurs.

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