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Australian Patent News and Updates | Caska IP Patent Attorneys

How to Get Patent Pending

A pending patent typically refers to a patent application that has been filed, but not yet granted. Patent pending status therefore  includes, in general, both provisional patents in the initial 12-month provisional patent period or standard patents that have been filed and not yet granted.

Provisional Patents  – a Patent Pending?

Most inventions are initially protected by a provisional patent application for an initial or “pending” 12-month provisional patent period  whilst the details of the invention or market strategy are being finalised. An Australian provisional patent application is valid internationally and will reserve your rights in most countries around the world provided your patent specification is drafted to international standards (and no, the IP Australia guides or examples will not meet this requirement – so contact us if you need an international level provisional patent application).
An Australian provisional patent application is valid internationally and will reserve your rights in most countries around the world for a 12-month period until a complete patent application is filed.

Marking of Products – Pat. Pending?

Whilst it is common to use the words “Patent Pending” or “Pat. Pending” or the like, there has been some suggestions (in Australia at least) that the use of the words “Patent Pending” is misleading, especially when used in connection with provisional patent applications. As such, the wording “Patent Applied for”, or safer still “Provisional Patent Applied for” is preferred in Australia to indicate that a provisional patent application has been filed. Once a standard or International patent application has been filed then you may more safely adopt the more usual “Patent Pending”. It is important to note that you should not indicate a product as “Patented” until the patent has been formally granted and there are penalties if you incorrectly mark your product.
It is important to note that you should not indicate a product as “Patented” until the patent has been formally granted and there are penalties if you incorrectly mark your product.

What about Innovation Patents?

Innovation patents are granted very quickly and without substantive examination. Accordingly, Innovation patents are only “pending” for a short period before being granted. A granted Innovation Patent cannot be enforced unless certified by way of examination. So, it is arguable that the use of the words “Patented” for a granted (not yet certified) Innovation patent is misleading. As such, it may be preferable to use the wording “Australian Innovation Patent” or “Innovation Patent No. 123456” or the like, so that it is clear the product is protected only by an Innovation patent. If the Innovation Patent is certified then the rights become inline with those of  a granted Australian Standard patent and the wording “Patented (in Australia)” or the like may be used.

Steps and How to get Patent Pending

If you would like to get patent pending Internationally, please contact Caska IP Patent Attorneys and we can arrange for the preparation and filing of an international level provisional patent application to protect your invention.

Tips to obtain Grants & Investment for Inventors

Last week, Andrew Caska of Caska IP Patent Attorneys Sydney & Newcastle attended the Hunter Innovation Festival. Whilst at the event we took the opportunity to speak with the Regional Manager of AusIndustry and experienced Angel investors to see how we can better position our Clients’ to achieve grants and investment. Here’s what we learnt.

Government Grants for Inventors

The Australian Government currently operates the Entrepreneurs Programme that includes the  “Accelerating Commercialisation” co-funded grant to support commercialisation activities. Further details on the programme may be found here >>> Entrepreneurs Programme. A co-funded grant requires a dollar-for-dollar matching between the Entrepreneur and the Government.
…we have been informed that a patent is more-or-less essential to obtaining the co-funded grant for technology based projects

One important criteria for award of the grant is the existence of Intellectual Property (“IP”), and in particular, patent rights for any inventions. We assumed that AusIndustry would “like” that a patent has been filed – but, we did not realise the extent and weight that  AusIndustry places on the filing of patents, especially standard or international (PCT) patent applications. In fact, the issuing of a standard patent (or the issuing of an early opinion confirming patentability from IP Australia) – carries significant weight and we have been informed that a patent more-or-less essential to obtaining the co-funded grant for technology based projects.

Accordingly, if your investment strategy includes seeking a government grant we do suggest the filing of the standard Australian patent application and/or PCT application, and where possible early patentability opinions should be obtained.

Angel Investment for Inventions

Angel investors are in some ways at the opposite end of the spectrum to seeking grants from the Government. We managed to speak with some seasoned investors about the importance of patents for attracting  investment. The response was similar to AusIndustry – a patent is considered more-or-less essential and “just part of what is expected”. However, the angel investors focus quickly changed to market validation. In other words, the  angel investors we spoke with want to know if an invention will sell, and will demand proof, before any substantial investment is made.
…make sure your IP is protected before disclosing  a product on KickStarter or to third parties
One way we discussed market validation is the use of a KickStarter (or similar crowd funding) campaign that allows persons from the open market to pre-purchase a product. Of course, to get to the stage of  KickStarter you do need a prototype and reasonably slick marketing to entice the pre-purchases. One option is to  set  the campaign target very high (so it most likely won’t be achieved) and using this data as market validation to show angel investors. In any case, the take home message was that angel investors  are really after market validation. However, make sure your IP is protected before disclosing  a product on KickStarter or to third parties.

Patent Attorney Conference

Recently, Andrew Caska and Claire Laurent  of Caska IP attended the annual Institute of Patent and Trademark Attorneys (IPTA)  conference on the Gold Coast.  This year IPTA  provided a solid variety of business sessions including very useful sessions on trademarks, designs and patents.

Updates on Registered designs

We were privileged  to receive an excellent designs session with respected patent attorney Des Ryan, who  provided some good insights into what is considered claimed and not claimed subject matter in Australian registered designs with regards to the use of dashed or broken lines.   Often,   broken lines are used in the representations of registered design applications to indicate subject matter that is outside the scope of the design ( this approach is very commonly used in US design patents). However,  recent Australian case law has called this approach into question and as such great care now needs to be taken with the preparation of  representations for registered designs in Australia.

Patents – Inventive Step

We were also privileged  to be provided with a panel discussion around overcoming difficult inventive step objections.  The panel included highly respected patent attorneys from the UK, the United States of America, China and Japan  who provided detailed insights into the types of inventive step objections that are raised in their home jurisdictions  along with tips on how to overcome these objections, and,  most importantly, guidance on how to  initially draft patent applications that are bound for these jurisdictions so as to be well placed when faced with a possible inventive step objection. We are now applying these new insights into all of our international (PCT) applications to place our clients’ inventions in the most favourable light on the international stage.

Chinese Patents with Caska IP

Caska IP has been securing Australian IP in China for a number of years and is now very well placed with a number of highly reputable and trusted Chinese patent attorney firms to secure our clients’ rights in China.

We also had the pleasure of making acquaintance with  a large Chinese patent and trademark attorney firm (see photo above)  who we have since been in contact with to  arrange competitive rates for our clients’ to secure their intellectual property rights in China.  Caska IP has been securing Australian IP in China for a number of years and is now very well placed with a number of highly reputable and trusted Chinese patent attorney firms to secure our clients’ rights in China.  Accordingly, if you require assistance with any intellectual property protection in China, please do not hesitate to contact us.

Patent Strategy – Should a Patent be filed?

Many companies and inventors are often focussed on “if” they can obtain a patent for an invention (i.e. is the invention patentable – at least novel etc.). However, perhaps are more pertinent question to ask is “should” a patent be filed (even if the patent is likely to be granted).

Below we have put together a “rule of thumb” list of factors to assist companies and inventors decide if they “should” file a patent. It is noted the list below assumes that the invention would likely be patentable.

Factors that Indicate a Patent Should be Filed

  • You are seeking investment or R&D Grants and wish to use the patent application to leverage investment or Grants
  • Your invention improves or replaces an existing technology that already sells well
  • The invention may be easily copied by reverse engineering
  • The invention has the potential to generate revenue of greater than $25,000 to $100,000 over the first 5 to 10 years in the market;
  • The invention is an improvement on a competitors product and the patent may disrupt your competitor
  • The invention is an improvement on your own product and will assist to “ever-green” your product
  • The invention will be of interest to an already active company in the market and that company would likely be interested in licensing or buying your patent and/or invention
  • You are thinking of selling your company and a patent will add value to the company

Factors that Indicate a Patent Should Not be Filed

  • The invention has a very short market life span (for example 1 to 2 years or less)
  • The invention is expected to only sell in small quantities and, for example, generate less that $10,000 over the first 5 years in the market place
  • The invention can be protected as a “trade secret” (treat this with caution)
  • Your invention does not really offer any advantage over existing products in the market place
  • You have insufficient funds for a professionally prepared patent (we recommend to not disclose your invention until you have the funds for a professional patent attorney to prepare and file your patent application)

Patent Strategy

We hope the factors above are of assistance and, of course, if you would like to help you decide whether or not you “should” or “can” file a patent – then please get in touch to arrange a patent strategy session.

Central Coast Startup Weekend

The “Startup Weekend” that has been staged in over 100 cities around the globe was hosted on the Central Coast this past weekend, 18 to 20 September 2015. This event includes pitching start up ideas to investors and teams are formed to help develop the ideas into a reality. Andrew Caska, of Caska IP, was a mentor at this event. For more information see the following link: Central Coast Start Up Weekend.

The Startup Weekend Process

The process of the Startup weekend is really quite intense and interesting to watch. Basically, at the beginning of the weekend people pitch their ideas and form teams to work on these ideas over the weekend. For most of Saturday and Sunday, the teams focus on developing the idea, validating the idea and building a minimal viable product (MVP)(like a basic website or an App). At the end of the weekend, the teams present the MVP to a panel of experts and investors were the judges.

The most interesting aspect that stood out from the Startup weekend was the focus on the target customer and then rapidly validating that the idea was going to work.

Being a Mentor

As patent and trade mark attorneys we are privileged to see a huge number of early-stage businesses every year and with our specialised knowledge of intellectual property and startup business we are uniquely positioned to advise in this area.

As a mentor, we assisted teams with identifying any intellectual property issues that may have arisen such as copyright, trademarks and software patents. For example, we gave the teams some general pointers about how to best choose a name for their startup that took into account factors such as a trademark law, branding and domain names.

Customer Identification and Validation

The most interesting aspect that stood out from the Startup weekend was the focus on the target customer and then rapidly validating that the idea was going to work. They were intense discussions on identifying the customer’s pain points and who will actually be the ideal customer for the start-up. Once the customer was identified, then teams were rapidly seeking to build basic websites and launching simple Facebook and Google Adwords campaigns to test the idea such as achieving target customers contacting the Startup or signing up for more information.

This process of customer identification and validation is also key to the more complex technology Startup environment and certainly in our practice some of the very best inventions are those that solve a pain point for a clearly identified customer and that customer has already indicated that they would be interested in purchasing the product or technology.

Caska IP – Commercialisation

As a modern patent and trademark attorney firm we are not just attorneys but also business advisers who assist our Clients’ with understanding the commercial environment and IP landscape. We have certainly taken note of the Startup weekend process and encourage all of our clients’ to undertake a structured customer identification and validation process during the development of any new invention – just make sure you don’t disclose your idea/invention before you discuss this with us – as you may need to firstly protect your idea/invention.

 

 

Patent Attorneys Supporting Manufacturing in the Hunter

Andrew Caska, Patent Attorney at Caska IP, recently attended the launch of the 2015 Hunter Manufactures awards. The event was held at AusTube Mills on Industrial Drive Mayfield, which is perhaps one of Newcastle’s most iconic manufacturing facilities.

We were lucky enough to have a site tour and inspect the milling operation and meet some of the friendly local staff. At the event, we also were able to network with some of our existing clients, such as Quarry Mining, and also form new connections. We are always looking for new connections not only for our own business, but also to help our clients to sell and manufacture their products.

Caska IP Patent Attorneys are pleased to a support of the 2015 Hunter Manufactures awards. These awards provide support and recognition for the manufacturing companies within the Newcastle, Hunter and Central Coast regions.

The Call for Innovation

Whilst “Innovation” has no-doubt become an over used word – again, there was talk of the need for innovation in the Australian manufacturing industry. We don’t proclaim to know all the answers, but we can let you know what is actually happening on the ground. There are various trends we are seeing, from niche speciality manufacturing right through to the full outsourcing of manufacturing to low cost countries.

There are various trends we are seeing, from niche speciality manufacturing right through to the full outsourcing of manufacturing to low cost countries.

Perhaps, the most promising trend, is companies starting to develop new and inventive products, patent protect these products, and then complete at least part of the manufacturing  in  low cost countries. This keeps the core IP in Australia and also allows a reduction in manufacturing costs. This assist with competitiveness. However, there are still some niche products that appear to be most competitive to manufacture in Australia or products where quality and speed of delivery are paramount. An example of these products are those within the mining consumables market.

How can Caska IP Help?

  • If you have a new product that requires manufacturing – let us know and we’ll see of any of our contacts are interested or may be able to assist you
  • Of course, being Patent Attorneys, we can assist with patent, trade marks, designs and other rights to make sure your rights are protected
  • Give us a call for a Confidential free initial discussion

The Value of Patents

Let’s start with a story.  We were approached by a Client – let’s call them Company X, to provide advice on a product they wanted to copy. The product was patented by Company Y.

We advised Company X that if they copied Company Y’s product (by making a product which included each of the claimed technical features) they would likely infringe Company Y’s Patent.

Company X then set about trying to work around Company Y’s patent and after much frustration (and multiple reviews by us) managed to come up with a workable but inferior product.

If a patent is poorly drafted it is easy to work around – you must have a patent drafted by an expert Patent Attorney to ensure your patent is of value

During this time Company Y would have had no idea that Company X was looking at their patent (patents become publically available). In fact, Company Y may be thinking their patent is not doing a whole lot – but really Company Y’s patent is working really hard behind the scenes to protect their business.

This is the value of patents – and in this case, the patent protected the patent holders (Company Y’s) business that was worth well over 1 million dollars.

Deter Copying (infringement) – without you needing to do anything

In view of the story above, it is clear that one of the key values of a patent is deterrent value. Most importantly, your patent deters others from copying your invention – without you needing to do anything.

Stop Copying (infringement)

If you do need to actively enforce your patent – you may send cease and desist letters (make sure you get advice on this) to alleged copiers and may seek to resolve the matter by settlement (such as by offering a license). Of course, you may also initiate infringement proceeding in the Federal Court.

Market Positioning & Product Price

The marketing value of patents also cannot be overlooked. Products or processes being labeled “Patented” have a propriety feel to them and customers know that they can only buy the “Patented” product from the patent holder (or license holder).

Because other competitors are “deterred” from copying your product or process there is less or no completion and this allows higher prices to be sustained and ultimately greater profits.

Adding Value to your Business

Because patents give you exclusive rights to an invention (and provide the “deterrent” value outlined above) investors or someone purchasing your invention or business place great weight on patents. Investors are also well aware of the market position and product pricing advantages of having patent.

In fact, we know of one start-up company that was able to obtain 11 million dollars of investment on the back of three provisional patent applications, a business plan and a basic prototype. Without the provisional patent applications – the investment would not have been made (we know because we were involved in the deal !).

How can Caska IP Help?

 We are registered patent attorneys who specialise in drafting and filing patents that broadly and strategically protect inventions. Well-drafted patents make it hard to copy the invention and ensure the patent is of high value.

To obtain a high value patent, simply get in touch by calling us or sending an email to mail@caskip.com.au.

The Take Home Message

  • Patents create value
  • Patents work behind the scenes to protect your invention
  • Patents are attractive for investors or selling your business
  • Patents allow higher prices and increase profitability
  • Valuable patents are expertly drafted patents
  • Contact Caska IP Patent Attorneys

Do you need a patent attorney?

An interesting question that comes up from time-to-time is: Do you need a patent attorney to draft and file a patent? This question is usually from ill-informed first-time inventors and sometimes quite well educated professionals such as engineers who believe they can navigate the patent system alone.

A quick Google search seems to present a number of options and “self-help” books or videos to convince inventors to prepare and file their own patents (these books and videos are of course sold to their “victims” with a no-liability disclaimer for the loss of your patent rights).

So in this article, we will attempt to explore this topic (as objectively as possible!) as to why our profession exists and hopefully demonstrate that, yes – you do need a patent attorney.

The Facts

According to IP Australia over 98% of patents prepared and filed without the assistance of Patent Attorney do not successfully make it through to a granted standard Australian Patent. More than likely, the remaining 2% are unenforceable or otherwise invalid.

This reflects my findings in our practice where we have never had a Client with a self-prepared patent that is in satisfactory condition. In fact, most of the time the Client is in a desperate situation in which they may have lost the rights to their invention.

Patent Attorneys

Patent Attorneys, like myself, have a technical qualification, such as Engineering, and a legal qualification, such as a Masters Degree in Intellectual Property law. We then become registered under the Patents Act as Patent Attorneys. However, we’re not lawyers or solicitors, and in fact, Australian lawyers or solicitors are prohibited from drafting patents under the Patents Act.

 We specialise in drafting patent specifications to ensure that your invention is protected from many different angles and someone will not be easily able to change your invention and escape infringement.

We also keep abreast of international patent law and incorporate those aspects into the patents we draft so that our Clients’ can also validly seek patent protection overseas in places such as the USA, Europe and China.

Can I draft and file my own Provisional Patent?

Provisional patents are often used to secure an early priority date for your invention and then other patent applications, including overseas patents, are “based” on the provisional patent. Accordingly, the provisional patent is the “base” or “foundation” on which all subsequent patent rights may come to depend.

A poorly drafted provisional patent application may therefore not be able to provide adequate “basis” for your invention later down the track and, in some cases, will result in all subsequent patent applications being potentially invalid.

In my opinion, the days of the “dodgy” or “self-prepared” provisional patent are over and anyone attempting to sell self-help books or videos is engaging in those activities to profit themselves rather than genuinely assist inventors to properly secure their inventions.  In fact, some of these businesses profit by passing your details onto Patent Attorneys who then use this as a lead to sell their services to you to file the complete patent or review and “fix” the work you have done.

Also, it is very important to distinguish between “drafting a patent” and “filing a patent”. In most cases, 95% of the effort (and cost) is the “drafting” and the “filing” is simply an administrative procedure.  Accordingly, you could “file” your own patent but it is what is written, claimed and disclosed in the patent specification that is really important.

Getting the Right Advice

My advice to any inventor or business is to get the right advice from an honest patent attorney practitioner (whether it is from Caska IP, or from another firm – just be careful of the firms that have “commercialisation” teams or seem like used car salesman).

You also can obtain some procedural advice from IP Australia – however, they cannot provide you with advice as to the best way to protect an invention or advice on patentability. IP Australia is simply a government body that administers the filing, examination and granting of patents.

We offer a free telephone consultation and a reduced fee initial in-person consultation to give inventors a rapid and frank assessment of their invention and the costs to properly protect their inventions. Accordingly, if you would like to know more – please give us a call.

Central Coast Professional Networking

Recently, Caska IP managing staff members Andrew Caska and Claire Laurent attended a Central Coast professionals charity fundraising event hosted by Watts McCray Lawyers and the Ken Duncan Gallery at Erina.

The charity was to raise funds and awareness for Destiny Rescue (http://www.destinyrescue.org/aus/) which focuses on rescuing and rehabilitating Children from situations such as child slavery.

The highlight of the night was an auction where some fantastic pieces of art from both Ken Duncan (centre of photograph) and local artist Neil Joseph (on Ken’s right next to Andrew) went under the hammer. Whilst we did not snare any art – we did purchase a dinner out at a fantastic spot in Terrigal whilst making a donation to a great cause.

The turn out at these types of events highlights how the Central Coast has a great variety of local professionals from artists (thanks Ken & Neil), doctors, engineers, manufactures, lawyers and of course patent attorneys. We encourage our Clients to shop locally on the Coast and Hunter region and if you need a referral, please contact us and we’ll help you find the right local person.

Patent an Idea?

Patent an Idea?

We receive many phone calls from Australian inventors who would like to patent an idea. In fact, more-and-more of the general public has come to believe that you can patent an idea. This is mainly due to the explosion of misleading websites offering people to protect or patent an idea. But can you really patent an idea?

Patenting Ideas or Inventions?

The truth is that you cannot patent an idea per se. For example, you may have had an idea to collect energy from the wind but have no actual devised means to collect the energy – this is just an idea, and is not patentable.

However, if you have an idea to collect energy from the wind and then also were able to propose some technical examples of how this may be accomplished, such as by using a rotor connected to an electrical generator, then you have an invention – which certainly can be patented.

It is important to note that you do not need to actually build your invention – but you do need to provide a detailed technical description of how the invention works and how it is to be used. This is why Australian Patent Attorneys have a technical degree such as an engineering degree to ensure that your invention is properly described. We can expertly show you how to patent in Australia and internationally.

How do you Protect an Idea then?

When drafting a patent, a patent attorney will attempt to claim the features of an invention in broad language to allow for the protection not just of your invention but also similar inventions that includes the same broad features or functionality.

Returning to our wind energy device example, we may claim “A device for collecting energy from a moving fluid, the device including a part adapted to be moved by the fluid and a generator coupled to the part…etc.” Now, whilst we still cannot protect the “idea” – we can certainly broadly protect the invention such that it would be difficult for anyone else copy the idea unless they were able to devise a wind energy device without a “part adapted to be moved by the fluid” and a “generator” – this is the power of a well drafted patent.

Taking you from idea to invention

In addition to our tradition patent attorney practice, we also provide engineering services and product design services to take your idea to invention. We can do so with a solid knowledge of patent law to create a product that is both technically sounds but also likely to be patentable.  If you like – we can then promote and assist you to market, license or sell your invention.

Free Consultation

 If you would like to know more or have some questions, please call us for a complimentary initial telephone conference.