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Intellectual Property


Intellectual Property

The first step is to determine what Intellectual Property you actually have. This is usually broader than you initially think.

Intellectual Property

Intellectual Property

Intellectual Property Audit

So before you can have an Intellectual Property Strategy, you will need to do an Intellectual Property Audit or IP Audit. IP Australia has an excellent guide to how to do this at Auditing Your IP so if you haven’t done this already, I recommend you read through the guide.

IP Australia

IP Australia

An example of an IP Audit is shown at World Intellectual Property Organisation at IP Audit – A “How to” Guide. So to see an IP Audit outcome. Check that out.

World Intellectual Property Organisation

World Intellectual Property Organisation

Intellectual Property Strategy

Now you have identified your Intellectual Property using an IP Audit, you can put together your Intellectual Property Strategy or IP Strategy. How to go about this depends on a lot of factors. Some examples are:

  • US Patents have moved from priority given to “first to invent”, to priority given to “first to file”. So filing early is now critical if you want protection or even the right to deploy your own invention which predated a patent from a competitor.
  • Different domains have different rules for determining patent infringement. For instance, The EU see protecting the idea as important and not just the specific wording of the patent.
  • If you want to defend a patent, you will need to fund the defense.
  • Trademarks get more respect than patents so use trademarks.
  • Trademarks potentially have unlimited life whereas patents and registered designs have finite life.
  • But you will have many other IP Resources including Trade Secrets which also potentially have infinite life.

You also need to have “Freedom to Operate“. This means your new invention could infringe someone else’s IP Rights. So it is also necessary to check that there isn’t a Patent, Trademark or Registered Design that you would be in breach of infringing if you proceeded. And if you are, you might want to look at whether you could license the technology. A recent change in IP Law means that a Patent holder cannot be unreasonable in restraining your business opportunity, and particularly if they are not competing with you, and especially if they are primarily acquiring and sitting on patents, or patent trolling.

The general steps of an IP Strategy are:

  • Decide who in your organisation will take responsibility for IP
  • And what you will do in house, and where you will get an IP Lawyer involved
  • Do an IP Audit and identify your Intellectual Property Assets
  • Determine if you have registered all these assets
  • If not, register trademarks and designs and that you want to protect
  • Decide if and how you will monitor for infringement of your IP
  • Be prepared to retire IP that is no longer of value
  • Ensure trade secrets and confidential information is secure

My thanks to Duncan Bucknell of Think IP Strategy for providing advice on this topic.

Duncan Bucknell - Think IP Strategy

Duncan Bucknell

Successful Endeavours specialise in Electronics Design and Embedded Software Development, focusing on products that are intended to be Made In AustraliaRay Keefe has developed market leading electronics products in Australia for more than 30 years. This post is Copyright © 2017 Successful Endeavours Pty Ltd.

Intellectual Property

Intellectual Property, or IP as it is abbreviated, is a very important topic. So what is Intellectual Property?

Intellectual Property

Intellectual Property

The diagram above shows some examples. Here are some more examples of Intellectual Property that specifically apply to the Electronics Design and Embedded Software Development:

  • Patents
  • Copyright
  • Industrial design rights
  • Plant varieties
  • Trademarks
  • Trade dress
  • Trade secrets

Copyright applies to things such as:

  • specification and requirements documents
  • reports
  • source code
  • schematic designs
  • PCB layouts
  • Bills of Materials (BOMs)
  • Product assembly and test instructions
  • source code
  • this blog

So a lot of the value created in a new Product Development project is bound up in the Intellectual Property generated.

Why this is important, is that many individuals and companies that offer Product Development services do not give you Intellectual Property Rights to the product you paid them to develop for you. We have picked up quite a few projects over the years where this lead to a toxic relationship between the client and the developer and they needed to go elsewhere.

Protecting your Intellectual Property

To protect your Intellectual Property the obvious steps are:

  • Have a non-disclosure agreement in place prior to sharing any information with another party
  • Ensure all staff and contractors have signed a non-disclosure agreement
  • Check out patents early. Both to determine if you might be able to patent, and also to make sure you aren’t violating anyone else’s rights.
  • Although Copyright vests automatically in Australia, do use Copyright notices
  • Make everyone clear on what you Intellectual Property Policy is
  • Register designs and trademarks
  • Also purchase relevant domain names

Intellectual Property Policy

A question we are often asked is “What is your Intellectual Property Policy“?

Here is how we handle IP including our own which we can license into your project to save both time and cost:

  • IP developed for you is owned exclusively by you and not used for any other purpose
  • IP provided by you is owned by you and only used for the purpose it was provided for
  • we will not share anybody else’s IP with you without their prior permission
  • we will not share your IP with anyone else without your prior permission
  • the non-exclusive license to our background IP is a single purchase at an agreed price and can be leveraged across multiple products
  • where improvements in our background IP become available, they can be incorporated into your product and only the modification cost applies
  • we regular sign non-disclosure agreements and even have one of our own you can use if you don’t have a suitable one yourself

And the last part is usually about how we charge for all this. The are specific costs associated with generating your exclusive IP for a product. Where variants are then designed, only the adaption or variation cost will be incurred. So for instance, changing from one NB-IoT vendor’s cellular modem to another modem from another vendor will only cost the PCB changes and code modification costs and would be expected to be substantially less cost than the initial implementation.

Another way to put all this, is that if you pay for it, you own it without any encumbrance.

Our aim is to ensure your success so it doesn’t make sense to make it difficult for you to own and exploit your own Intellectual Property.

And a little humour to finish off.

Copyright Humour

Copyright Humour

Successful Endeavours specialise in Electronics Design and Embedded Software Development, focusing on products that are intended to be Made In AustraliaRay Keefe has developed market leading electronics products in Australia for more than 30 years. This post is Copyright © 2017 Successful Endeavours Pty Ltd.