Three common mistakes of do-it-yourself IP protection

IP-PROTECTION

Every business is looking to become leaner and reduce expenses. One of the first casualties on the budget sheet is intellectual property (IP). Often, businesses will cut IP altogether, or alternatively, look to do the work in-house.

However, just like do-it-yourself electrical work, DIY IP can end up giving you a nasty shock. The following are some common mistakes that are made by business when IP work is done by an untrained professional.

The Australian and New Zealand Governments have made the filing of new applications easier than ever before. While the authorities are to be commended on their commitment to accessibility and customer service, a business should exercise some caution before blindly entering the IP registration process. Here are the most common mistakes:

1.     Filing applications in the wrong name

Registered forms of intellectual property (patents, registered trade marks and designs) always begin life with an application form. However, an error in the application form can be like a faulty gene; it can be a ticking time bomb just waiting to cause a fatal illness.

For example, the validity of a trade mark registration will often hinge on whether the applicant has a legitimate claim to ‘proprietorship’ and whether they have a genuine intention to use the trade mark.

If the applicant began as a sole trader and intends to continue as a sole trader, this is relatively straightforward. However, the question becomes murkier when a company is involved, particularly if the underlying business commenced before the company was incorporated.

In that case, the facts must be assessed to determine whether the company is the correct owner, or the individual/s behind the company. Other issues also arise with partnerships, trusts and joint ventures.

Many businesses also wish to quarantine their intellectual property into a holding company. This is often a prudent decision, provided that it is done correctly. If done wrong, it can lead to invalidity or unenforceability of a trade mark.

Errors in the initial application can be impossible fix later on. As such, it is imperative to get the application right the first time around.

2.     Incorrectly preparing a specification

Patent and trade mark applications both rely on ‘specifications’ to define the scope of IP protection.

With patents, the specification is a description of the invention. If this specification defines the invention too narrowly, then a patent applicant can find that the scope of their patent protection is far too narrow. This is often the case when self-filing patent applicants describe their invention as being for a very particular purpose, when it is potentially applicable to a wide range of applications.

For example, an inventor might develop a novel type of extendable pole for fruit picking. However, if the invention is defined too narrowly, their rights could extend solely to fruit picking poles, and others would be free to adopt the same invention for painting poles, pool cleaning poles, or any other pole not specifically used for fruit picking.

Similarly, a trade mark application must be accompanied by a specification of goods and services in respect of which the trade mark is to be used.

Often, the distinction between ‘goods’ and ‘services’ is not well understood. Self-filing applicants may file for goods, whereas in fact they are providing services, or vice versa.

For instance, a pool filter installer and repairer may assume that ‘Class: 11 Filters for swimming pools’ accurately describes what they do. However, that is incorrect. The correct class and specification would be ‘Class: 37 Installation and maintenance of pool filters’. While the difference may appear to be slight, the error can lead to invalidity or unenforceability of a registered trade mark.

3.     Giving up too easily

Many trade mark and patent applications receive negative examination reports.

For many self-filers, these lengthy reports simply appear to be a ‘rejection notice’. However, this is not the case.

Objections raised by an examiner are often not insurmountable.  There are strategies that can be used to overcome obstacles. An experienced and trained IP professional can often recognise these strategies very quickly.

Before throwing a negative examination report in the bin, a self-filer should pick up the phone to an IP professional and discuss their options. Most IP professionals are willing to give some brief initial advice free of charge, with suggestions on options and associated costs moving forward.

Doing nothing has potentially greater negative consequence; namely, that IP may be permanently lost or may be very difficult or expensive to retrieve in the future.

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