Episode 2: Different forms of Intellectual Property

Synopsis

In this second week of the series, featuring intellectual property (IP) practitioner Dario Tanziani from Adams & Adams Attorneys, we look at how executives can better manage and leverage company Intellectual Property.

Transcript

Summit TV takes a look at intellectual property in a 13 part series with leading specialists. This is the second of the series featuring intellectual property (IP) practitioner Dario Tanziani from Adams & Adams Attorneys on how executives can better manage and leverage company IP

STEPHAN LAMPRECHT: Welcome to Intellectual Property. This week we focus on the different forms of intellectual property. I’m joined in the studio today by Dario Tanziani from Adams & Adams Attorneys. Dario, last week we started of just briefly talking about what intellectual property is - can you just give us an overview from your side about the role and value of intellectual property?

DARIO TANZIANI: In a sentence intellectual property is the fruits of the human intellect in various areas of endeavour - if you want to summarise it succinctly IP leads to innovation and progress.

STEPHAN LAMPRECHT: Innovation and progress. That’s a very good point you’re making in the sense that what we want to achieve as a country is very much focused on innovation. I think innovation comes around quite a lot currently if you think about government policy. We spoke about the definition and a little bit about the uses of intellectual property, but surely there are different types of intellectual property - can you give us some examples?

DARIO TANZIANI: Yes, there’s a wide panoply of rights which cover intellectual property - patents, trademarks, copyright, registered designs, plant breeder’s rights, domain names. There’s also the unregistered rights or common law rights such as know-how and also common law trademarks…

STEPHAN LAMPRECHT: From a business point of view how do I distinguish between these different types of intellectual property rights? When do they apply? When do I pursue certain forms of protection?

DARIO TANZIANI: Patents are mainly directed at technical innovation - anything that’s new and inventive, and is capable of being applied in trade, industry or agriculture is more than likely susceptible to patent protection. Trademarks deals with branding like Coca-Cola, etcetera. Registered designs deal with the appearance of articles - but not only in relation to their aesthetic appearance, but also insofar as that appearance may be relevant to the function of a particular article.

STEPHAN LAMPRECHT: For example a component in a car engine that needs to work in a certain way in order for it to be functional?

DARIO TANZIANI: Precisely. Also, it would cover things like integrated circuit topographies and things like that. Copyright is mostly directed at artistic works, musical works and literary works. There’s also a technical element to copyright such as technical drawings which is very important for small and medium enterprises.

STEPHAN LAMPRECHT: If you think about all the discussions currently going on around open source software and so forth - that’s pretty much a copyright issue?

DARIO TANZIANI: That is pretty much a copyright issue, yes. Software is one of the species of intellectual property that’s covered by copyright - and in some cases also by patents.

STEPHAN LAMPRECHT: Can we stay on patents a little? For example if I’ve come up with a new idea is the patent route the only route, or are there other routes that I’d take to protect my invention, to protect my innovative idea?

DARIO TANZIANI: Your innovative idea can be protected by a number of these rights that we’ve discussed. It could very well be protected by patents, at the same time it may have elements which could be protected by a registered design - for example elements of appearance. There could be elements protected through copyright, and at the end of the day you might want a good brand in order to promote your product…

STEPHAN LAMPRECHT: So it’s a whole package?

DARIO TANZIANI: It’s a whole package that can apply -not just one.

STEPHAN LAMPRECHT: In these discussions there’s a lot of focus on the protection of intellectual property - can you elaborate about that form or type of intellectual property as a vehicle in my business commercialisation process?

DARIO TANZIANI: Frequently small and medium enterprises don’t have the resources to go into a particular market, but they have invented something particularly good - then there’s always the licensing option in terms of which they remain in ownership of the patent, but they grant permission to other people to exploit it in return for a royalty to themselves. In many cases that would be the more appropriate route to follow.

STEPHAN LAMPRECHT: So if you think about it differently saying that if I want to licence something - then it does make a lot of sense to define what I’m licensing? The better it’s defined the better it’s going to be sustainable in the long run…

DARIO TANZIANI: Certainly. If you’re licensing a patent then by definition the patent itself will set out what it is that you are licensing. In many cases with know-how you have to be very careful how you define the know-how that you’re licensing out…

STEPHAN LAMPRECHT: In the academic and research environment there’s a lot of talk about this issue of publication or disclosure - should I disclose or should I first try and patent and get protection for my idea? Can you give us a little bit of thought from your point of view as to the process? What happens if I disclose my idea? Can I go and patent it afterwards? If you can elaborate on that…

DARIO TANZIANI: As a general rule you shouldn’t make any disclosure at all until you’ve actually filed a patent application in respect of the invention. In some cases - especially in the case of small and medium enterprises that may need assistance in developing the invention to fruition - you can make a disclosure under cover of a confidentiality and development agreement to a particular instance that might help you to finalise the invention as it were. But the general rule is do not disclose until such time as you’ve filed a patent application or a registered design application in respect of the invention…

STEPHAN LAMPRECHT: So if I’m an entrepreneur and I’m excited - I’ve got a wonderful idea, I want to go and tell people about it - I should first speak to somebody who can help me to formulate what it is, and try and get that patent application into the filing process?

DARIO TANZIANI: Yes. First speak to you patent attorney before you speak to your friends about it…

STEPHAN LAMPRECHT: Can we talk a little bit about a patent versus a trade secret? In which instances will I just keep it secret and not reveal that new invention to anyone?

DARIO TANZIANI: In an instance where for example you wouldn’t want the actual invention itself to become known to the public - because the trade-off with a patent is that you get 20 years of exclusivity, but in return for that you have to disclose in your patent specification exactly what your invention is. At the end of the 20 years that all goes into the public domain. Now if you don’t want that to happen and you have a particular formulation for example that you believe you can keep secret for much longer than 20 years and still derive the commercial benefit - then you don’t go the patenting route. You keep it completely secret and you go ahead and you exploit it without patenting…

STEPHAN LAMPRECHT: Obviously then there’s a lot of responsibility from my side to keep it a secret, and especially if you work with engineers and scientists as we mentioned, where you want to tell people what you’ve come up with - that can be a very difficult process.

DARIO TANZIANI: It can be. It has to be very carefully circumscribed and described in the various documents for whomever the engineer may be working - being contractually bound to keep things secret. The product is going to be out in the market place - the presupposition is that nobody can actually analyse what it’s actually made up of.

STEPHAN LAMPRECHT: So you’ve got to go to court and then it’s got to be revealed in public what that trade secret actually was or wasn’t and so forth…

DARIO TANZIANI: If you do end up going to court. Hopefully you don’t. The only way that you would really want to go this route is if it’s possible to commercialise a product without somebody finding out what’s in the product. One good example would be Coca-Cola. They’ve never patented their formulation - they’ve kept it secret all these years, and they’ve carried on exploiting it to great advantage that way. That’s one route. In other cases it’s inevitable that the composition or the particular machine that you are going to exploit will become known to the public - there’s no way that you can hide what’s in there. In that case you might as well patent it - then you will get your 20-year exclusivity in any case.

Next week Intellectual Property delves deeper into how to derive value from intellectual property, and how to exploit intellectual property for strategic and competitive advantage.