Section 7: Glossary & further reading

In this section:

Glossary

  • Assign: The transfer of IP rights or liabilities.
  • Claim: A statement by the patent applicant specifically describing the heart of the invention; claims establish the essence and scope of protection given to the patent owner.
  • Chain of title: The sequence of historical transfers of title to a piece of IP. The ‘chain’ runs from the present owner back to the original owner of the IP.
  • Conception: The initial creation in the inventor’s mind, occurs when a solution is formulated, not when the underlying problem is recognised.
  • Confidentiality agreement: A legal document through which IP can be disclosed by one party to another to be used for only stated purposes, not to be disclosed to others, and returned to the giver upon request.
  • Copyright: A class of intellectual property rights covering works fixed in a tangible medium of expression; copyright protection covers forms of expression (e.g. novels, songs, photographs, software) at the moment of their creation.
  • Disclosure: A statement indicating the character of the invention, its construction, operation and/or application.
  • Exclusive license: Grants to the licensee the right to use the IP, at the exclusion of all others, including the licensor
  • Freedom-to-operate: Means you have the freedom to test, market or sell a product or service in the particular area (without infringing on someone else’s protected IP).
  • Infringement: Commercially using protected IP without the consent of the IP owner.
  • Intellectual property (IP) rights: The rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period. It gives a person certain exclusive rights to a distinct type of creative design, meaning nobody else can copy or reuse that creation without the owner’s permission. 
  • Intellectual Property (IP): Refers to the ownership of an idea or design by the person who came up with it. It is a term used in property law, meaning intangible property that is the result of creativity. Types of intellectual property include trade secrets, trademarks, copyright and patents. In the University context this refers to an invention and original work of authorship.
  • Jointly owned intellectual property (IP): IP that is owned by two or more parties. This may mean that a joint decision is required by all parties for practically any and all exploitation of the IP rights.
  • Know-how: May refer to technical data, formulae, standards, technical information, specifications, processes, methods, code books, raw material, as well as information, knowledge, assistance and trade practices and improvement thereto.
  • License: A contract that allows an IP owner to give discrete rights to others regarding use of their IP.
  • Licensee: The party that receives the license.
  • Licensor: The party that grants the license.
  • Non-exclusive license: Grants to the licensee the right to use the IP, not to the exclusion of others.
  • Office action: A document written by an examiner in a patent or trademark examination procedure, summarising the examiner’s determination of the allow ability of the patent claims or trademark class use.
  • Patent: A form of intellectual property that can be used to protect fundamental ideas or concepts that are new, useful and non-obvious; some creative works can be covered by both copyright and patent protection.
  • Patent counsel: A patent attorney is an attorney who has the specialised qualification necessary for representing clients in obtaining patents and act in all matters and procedures related to patent lay and practice such as filing an opposition.
  • Patent specification: The ‘body’ of a patent application; 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.
  • Patentability: The substantive conditions that must be met for a patent to be held valid; these are novelty, inventive step, industrial applicability and enablement.
  • Prior art: In most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claim of originality.
  • Priority date: In patent law, when a priority is validly claimed, the date of the filing of the first application, called the priority date, is considered to be the effective date of filing for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application.
  • Reduction-to-practice: In patent law, the reduction to practice is the stop in the formation of an invention beyond the concept thereof. Reduction to practice may be either actual or constructive.
  • Royalty: Payment for use of IP, usually a stated percentage of product sales.
  • Trademark: A type of intellectual property in the form of a symbol, word or words legally registered or established by use as representing a company or product; also knowns as a brand or brand name.
  • Trade secret: A type of intellectual property in the form of a formula, practice, process, design, instrument, pattern, commercial method or compilation of information not generally known or reasonably ascertainable by others by which a business can obtain an economic advantage over competitors or customers.

Further Reading

  • Bowrey, K., Handler, M., and Nicol, D., 2010, Australian Intellectual Property: Commentary, Law and Practice, Oxford, pp. 794.
  • McGinness, P., 2003, Intellectual Property Commercialisation: A Business Managers Companion, LexisNexis Butterworths Australia, pp. 448.
  • Trott, P., 2012, Innovation Management and New Product Development, FT Prentice Hall (Financial Times), pp. 620.
  • WIPO (World Intellectual Property Organisation), 2015, Successful Technology Licensing: IP Assets Management Series, available at: www.wipo.int/edocs/pubdocs/en/licensing/903/wipo_pub_903.pdf