Section 4: Intellectual property - Protection & patenting

Individuals’ roles and responsibilities during the patent application/prosecution process
Figure 4: Individuals’ roles and responsibilities during the patent application/prosecution process

What does the patent process involve?

What should creators expect during patenting?

Innovation ANU manages the patent process for all patentable inventions developed at ANU (see Figure 4). The process begins, when a creator submits an invention disclosure for commercial consideration. If following review of the disclosure, it is approved for IP protection and commercialisation, Innovation ANU will engage a qualified patent attorney to draft an initial patent application – usually a provisional patent application. This type of filing serves to establish a filing date (otherwise known as the priority date) and provides protection for a 12-month period whilst further research is conducted to improve the description and scope of the invention, i.e. further work is done to solidify the functionality of the invention with supporting data. This type of application allows creators to continue collecting data that validates the invention for one year beyond the filing date. The filing date is particularly important, because if two separate creators apply for patents on the same or similar invention, the first one to file will receive the patent.

Before the end of the 12-month period, Innovation ANU (in conjunction with creators and their School Director) will re-evaluate the supporting data and determine whether or not to convert the provisional into a Patent Cooperation Treaty (PCT) application. Patent decisions are business decisions based on market considerations, necessity of protection, probability of success in licensing and recovering expenses, and potential market impacts. The PCT provides an administrative process whereby a single international patent application is recognised by the national patent offices of the PCT signatory (member) countries (> 130). In other words, the PCT application is an international place holder application filed in the home country of the applicant that reserves the right to file in Australia and many other foreign countries at a later time (30 months later). PCT applications are published 6-months after filing.

Before the end of the 18-month PCT period, Innovation ANU (again in conjunction with creators and their School Director) will re-evaluate the invention to determine whether or not to convert the PCT into specific foreign country applications, otherwise known as National-Phase filings. Converting a PCT application into foreign country applications involves escalating expenses, and as a consequence Innovation ANU is much more selective in its filings, i.e. will typically not pursue National-Phase filings without a licensee in hand to cover such expenses. Once a National-Phase application has been filed it will be assigned to a patent examiner who specialises in that technological area. The examiner considers the scope (or breadth) of the claims against prior art. They then issue an office action accepting (rarely) or rejecting (typical) some or all of the claims, as not distinguishing over that which is already known. An office action will often disallow or significantly narrow the patent claims. In the case of claim rejections the patent attorney, with the assistance of the creators, can rebut the examiners arguments and/or respond with modifications to the claims. Multiple iterations are typically required to obtain allowance of the patent application – with this process taking anywhere between 2-5 years (or even longer) depending on the backlog of patent applications with certain patent offices. 

Once granted, the patent is protected under law. If someone has a granted patent no other individual or company is legally allowed to benefit from the work while the patent is active in the following ways: manufacturing, using, selling or proposing to sell, or importing. Once granted, generally a patent has a life of 20 years from the filing of the first complete patent application (or PCT application). Published patent applications and granted patents look very similar, so they can be easily mistaken. Just because a patent application is published does not mean that it will always be granted. Patent applications are published in order to make the public aware of what is seeking patent protection. This means that if the patent application is not actually granted, the public can still learn from the work scoped out in the patent application. A detailed patent application process flow chart is provided in Appendix A (see Reference Documents in sidebar).

What is the creators role in the patenting process?

Patent applications and office action responses are drafted by external patent counsel in collaboration with Innovation ANU and the creators. Innovation ANU will work with the creators to scope out the invention and help them engage with the patent attorneys. Creators should be aware that a patent is a legal document, and its language and structure is very different from a scientific publication. That said, a draft manuscript describing key findings and results is a great place to start when initially conversing with the patent attorney to draft a provisional application. Creator input is needed throughout the entire patenting process – which can take years. The creators active participation in and commitment to the patenting process is required even if the creator has left the University, or even if the invention has been commercialised. Creators will need to review drafts of documents, review Office Actions and provide compelling arguments as to why claims should be allowed as well as sign assignments and other legal documentation.

Who pays for patents?

If ANU-owned IP is being patented, the creator(s) are not typically responsible for any costs associated with obtaining a patent for their invention. This cost is instead shared between Innovation ANU and the relevant College/School of the creator(s) (see Table 10). That said, some Schools request that their creators also cover a portion of the School’s patent costs. Innovation ANU recommends creators to speak with their School Manager for clarification.

Table 10: ANU's patent cost distribution model

Stage Innovation ANU College/School Approx cost
Provisional (filing) 100% 0% $4-10k
PCT (filing) 75% 25% $15-20k
National-phase (filing & prosecution) 75% 25% $100-300k

Whats the difference between the inventor and applicant of a patent?

The inventor(s) are the creators of the invention, i.e. the individuals that devised the invention. While contributors are provided for under ANU’s IP policy (i.e. they are entitled to a share in the returns of any successful commercialisation of the invention), only inventors, not contributors, are named in a patent application. The applicant is the owner of the IP. Only the IP owner has the right to file a patent application, which typically resides with the University itself. Creators that do not own their own IP cannot file their own patent applications.

What is the difference between a freedom-to-operate and patentability search?

Freedom to operate (FTO) means you have the freedom to test, market, or sell a product or service in a particular area i.e. no one has patents already that prevent you from doing these things. A FTO search is an analysis to determine whether a product, technology or invention may infringe on someone else’s patent claims. Innovation ANU does not perform substantive FTO searching, though it may be undertaken by a commercial partner as part of their due diligence. The cost of a FTO search can range from $3,000 to $100,000 depending on the level of analysis wanted.

Patentability refers to the substantive conditions that must be met for a patent to be held valid (see Section 3). The purpose of a patentability search (otherwise known as a novelty search or prior art search) is to find out if a new invention may be patentable by searching relevant prior art. A patentability search does not consider infringement. The main questions to be answered by an effective patentability search are: should I file a patent application, and how broad should my independent claims be in the initial filing?

Is there such a things as a worldwide patent?

There is no such thing as a single patent filing that will protect the invention in every country on earth. To get patent protection in a given country, the applicant will need to file for a patent in that specific country. e.g. for protection in Australia, the applicant needs to file for an Australian patent, and for protection in the US, the applicant needs to file for a US patent, and so on. 

Why does ANU not file directly into each country?

ANU does not proceed directly to National-Phase filing for two reasons:

  1. Progression from provisional, to PCT, to National-Phase delays the cost of foreign applications (which costs ≥ $30,000 per country), giving Innovation ANU and the creators more time to develop, market and license the invention. 
  2. An examination takes place during PCT (Figure 4) wherein a single examiner comments on the patentability of the claims, flagging early issues that can be addressed, to simplify the patent prosecution process once National-Phase is entered.

Who decides on the countries that patents are filed in?

Typically ANU and/or licensees (if the IP rights have already been licensed prior to National-Phase) decide on the countries that the patents are filed in. ANU’s default position is to file in the United States, Canada, Europe, Australia, China and Japan; but this will change depending on the answers to the following questions:

  • Where are the main competitors? Where are all the potential manufacturing sites? Competitors might be able to gain an edge by manufacturing or selling through foreign markets.
  • Is the invention relevant only to a particular foreign market or region? e.g. patent protection for oil drilling technology would not be valuable in countries without access to oil reservoirs.
  • What are the goals of the patent protection? Exclusive market share for the invention? Preventing competitors from copying or stealing the invention? Licensing the invention to wider markets? Seeking funding from venture capitalists or acquisition from larger companies? With these factors in mind, consider filing in countries where the competitors or potential licensees might have operations or customers.
  • What is the budget? Allow $30,000-$50,000 per country over the 20-year life of the patent to cover costs such as official filing fees, translation fees, legal fees and maintenance fees.
  • What are the logical set of countries which maximum market opportunity exists for the invention? Pursue protection in those countries where the economy is well adapted to provide the most economic potential for exploitation.

Will ANU enforce its patents?

Patents cannot be enforced until they are granted. If a need arises to enforce a patent a decision will be made at that time regarding the best course of action. ANU does not generally carry its patents independently through to grant. If rights are transferred (via a license or assignment) to a licensee, then the licensee would be expected to take on responsibility for enforcing the patent rights.

What are patent claims and how are they related to patent prosecution?

Patent claims define, in technical terms, the extent of the protection conferred by a granted patent or the protection sought in a patent application.

There are two basic claim formats: independent claims and dependent claims. Where independent claims stand on their own, dependent claims depend upon another claim and are generally directed to particular embodiments as fall-back positions. Each independent claim consists of three parts: the preamble ("an apparatus for..."), a transitional word or phrase ("which compromises") and the body (lists the main elements of the invention). In practice, dependent claims are often used to focus on the creators preferred embodiment of the invention, e.g. the actual product design that the creator intends to use.

Claims can be categorised in terms of what is being covered. The most common claim types are apparatus (or produce, device, system, article or composition) and method (or process), however there are many different claim categories that may be used to patent an invention. In general, the broader the claim coverage, the fewer elements or steps required to prove infringement. Unfortunately, patents with broad claim coverage often face significant obstacles regarding claim validity, e.g. novelty. By law, sufficient detail must be provided in the written description (known as the specification) of the patent to support the claims. The specification generally consists of a background section, a summary of the invention, a summary of any figures or drawings, and a detailed description of the invention.

Patent prosecution refers to the negotiation process between a patent applicant and a patent examiner at a patent office. Patent prosecution involves negotiation with the patent office with respect to the scope of the granted patent claims.

Individuals’ roles and responsibilities during the trademark registration process
Figure 5: Individuals’ roles and responsibilities during the trademark registration process

What does the trademark process involve?

What is trademark registration?

Unlike patents, a registered trademark is not protection for only one product or process – it can be done for a set or class of products or services. A trademark is a territorial right, which (similar to patents) means there is no such thing as a worldwide trademark. Each trademark application is restricted by geographical boundaries of a country, e.g. a registered trademark in Australia, only protects that trademark in Australia – if protection is sought for the US, then the trademark must be registered in the US, and so on. 

In addition to the eligibility considerations discussed in Section 3, there are three registration requirements that must be met, when selecting a trademark: (1) Is the trademark a protectable element? (2) Will it be used as a trademark? (3) Will it distinguish your goods and services from those of others? Only if the answer is YES to all three questions is trademark registration available. What creators can expect during the trademark registration process is illustrated in Figure 5. In addition, a detailed trademark application process is outlined via a flow chart, in Appendix B (see Reference Documents in sidebar).

How much does a trademark cost and who pays for trademarks?

If ANU-owned IP is being trademarked, the creator(s) are not responsible for any costs associated with obtaining a trademark for their invention. This cost is instead shared between Innovation ANU and the relevant College/School of the creator(s) in the ratio of 75% Innovation ANU and 25% College/School.

The total cost for registering a trademark is dependent on the country being filing in, currency fluctuations, changes in law firm fees (and fees of their associates), prosecution costs (dependent on how many objections are raised by the various trademark offices) and the number of classes protection is being sought for. Below are a few examples of trademark costs (estimated from patent office websites).

Table 11: Estimated trademark costs for two or four classes

Country No. of classes Initial costs (filing, registration, response to objections) Renewal costs
Australia 2
4
$3,750 AUD
$4,750 AUD
$450/class (10 yr)
$450/class (10 yr)
Europe community 2
4
$2,250 (€) ($4,000 AUD) 
$3,250 (€) ($5, 850 AUD)
$1,000 (10 yr)
$1,000 (10 yr)
Canada 2
4
$3,000 (CAN) ($3,100 AUD)
$4,000 (CAN) ($4,400 AUD)
$350/class (15 yr)
$350/class (15 yr)
United States 2
4
$3,400 (USD) ($4,400 AUD)
$4,400 (USD) ($6,500 AUD
$400/class (10 yr)
$400/class (10 yr)
Japan 2
4
$2,900 (AUD)
$3,500 (AUD)
$1,250/class (5 yr)
$1,250/class (5 yr)
China 2
4
$3,400 (USD) ($4,400 AUD)
$4,400 (USD) ($6,500 AUD)
$500/class (10 yr)
$500/class (10 yr)

Issues to consider when selecting/designing a trademark?

  • What is the nature of the mark? (e.g. inventive word, graphics only, stylised)
  • Is the mark distinctive?
  • Is the mark legible and easy to pronounce?
  • Will the mark be used in colour?
  • Is the nature of the mark appropriate for the goods and/or services?
  • Are there identical or similar existing marks for similar goods and/or services?
  • Have trademark clearances been conducted for the mark?
  • Is the mark already in use?
  • Does ANU own the copyright in the artwork of the mark?
  • Does the mark achieve other marketing objectives?
  • Is the mark adopted from a foreign trademark?

It is vital that a clearance search is conducted on the trademark (using multiple trademark registers) to confirm that there are no existing similar trademarks for similar goods and services that could prevent ANU from registering the proposed trademark. Further, it will avoid any potential trademark infringement that may occur through the use of the mark, if it is indeed already registered by another party. 

How do you apply a registered trademark?

A registered trademark is typically valid for 10 years and is renewable as long as it continues to be used commercially. A registered trademark must be used in the course of trade in relation to the registered goods or services otherwise another party can apply to remove it from the register for non-use. There is no legal requirement to use the ® or ™ symbol to identify a trademark, however it is advisable to do so. The symbol ™ may be used with any registered or unregistered trademarks, whilst the symbol ® should only be used to identify a registered trademark. 

Avoid generic use of the trademark. If a trademark becomes a generic word, trademark protection may be lost because it is no longer distinctive or indicative of the business and its goods and services. For example, aspirin, nylon, band-aids and Cellophane were initially registered as trademarks but now are used to refer to a type of product rather than to identify a single manufacturer of the product.

When should creators considering patenting versus trademarking?

Patenting and trademarking are not mutually exclusive, meaning that both forms of protection could apply to the same piece of IP. Some patentable versus trademarking scenarios are discussed below.

  • Invention: Musical instrument stand: The unique structure/composition of the stand was patent protected (to prevent its use in other musical stands) as well as trademarked with a catchy brand name.
  • Invention: Software-as-a-Service (SaaS) web platform: The underlying software code (object and complied code) was not patent protected, but instead treated as a trade secret. The website was trademarked in order to create ‘brand name’ recognition.
  • Invention: Layer of a solar cell: The underlying design and method of manufacture of the solar cell layer was patent protected, but given that this invention could not be marketed alone, i.e. required integration with other layers to create a fully functional solar cell, it was not trademarked. The commercial strategy was then to license the invention to an existing solar cell manufacturer and given that they would already have their own trademark/brand name there was no benefit to ANU to trademark the invention prior to licensing.

Mechanisms for copyright protection, for example in computer software
Figure 6: Mechanisms for copyright protection, for example in computer software (Spruson & Ferguson, 2009)

What does the copyright process involve?

Is copyright registration required?

Copyright protection arises automatically on creation of an original work. There is no formal process of registration required for copyright protection of a work. However, there are steps that can be taken to make others aware that the work is copyright protected. A number of these mechanisms are listed below.

Copyright notice

It is important to affix an appropriate copyright notice so others are aware that they are not free to use the work without permission. Works owned by the University should bear the following copyright notice: © 20XX, The Australian National University. All Rights Reserved.

Escrow arrangement

A software escrow is a service that helps protect all parties involved in a software license by having a neutral third party escrow agent hold the source code, data and documentation until a mutually-agreed upon event occurs.

Digital Rights Management (DRM)

DRM is a systematic approach to copyright protection for digital media. The purpose of DRM is to prevent unauthorised redistribution of digital media and restrict the ways consumers can copy content they have purchased. Typically DRM is implemented by embedding code that prevents copying, specify a time period in which the content can be accessed or limits the number of devices the media can be installed on. 

Technological Protection Measures (TPMs)

There are two types of TPMs:

  • Access Control TPMs: Used to control access to copyright content. Some examples include password control systems (a members only password), payment systems (where you have to pay a fee to access certain content), and time access controls (a technology that manages how long you can access copyright content).
  • Copy Control TPMs: Prevent users from copying copyright content. Some examples include a software lock that prevents you from making a copy of a computer program, encryption measures stored on the disk containing a movie or CD which prevents you from copying the song or movie, and a technology that locks documents to prevent them from being copied.

Open source licenses

Open source licenses are licenses that comply with the Open Source Definition – in brief they allow software to be freely used, modified and shared, under defined terms and conditions. Information regarding software inventions established from University IP is contained in a separate handbook.