1. ELEC3017: Electrical
Engineering Design
Intellectual Property

2. References
• Fraser Old: Protection of Intellectual Property,
– Notes on class web-site
• John Kenny, “Patent nonsense,” Business
Review Weekly, June 19-25, 2003, pp. 34-41.
• http://www.wipo.int
– Home page of the “World Intellectual Property
Organization”
• http://ipaustralia.gov.au

3. Intellectual Property
• Term coined by John Locke in 17th C.
• Includes
– patents, trademarks and copyright
• Protected by WIPO
– World Intellectual Property Organization
– Organization within the United Nations
– Currently 182 member states (inc. China)
– Manages a system of treaties

4. What is Copyright?
• An unregistered right
• Comes into effect immediately
• Sufficient to mark your copyright work with the
copyright symbol © followed by your name and
the date
• Does not protect ideas. Only protects the
expression of ideas in a piece of work

5. Copyright Protection applies to …
• Original literary works
– novels, instruction manuals, computer programs,
articles in newspapers, …
• Films (video, cinema, etc.)
• Original musical works
• Other original artistic works
– paintings, engravings, photographs, technical
drawings, diagrams, etc.

6. Copyright Implications
• Protection is quite weak
– Only protects “copying”
– 3’rd party can independently create a similar work
(e.g., software)
• may need to be able to demonstrate that creation was
independent
– Software companies create “clean room”
environments for this purpose
• closed teams with no access (current or prior) to the original
copyrighted software they are trying to emulate

7. Trademarks
• A trademark is a type of “badge” to indicate the
source of goods or services
– can be a word, phrase, letter, number, sound, smell,
shape, logo, picture, aspect of packaging or a
combination of these
• “House marks” are trademarks used to identify
the company as a whole
– e.g., FORD, MICROSOFT, …
• “Model marks” are trademarks associated with a
specific product
– e.g. LASER, WINDOWS, …

8. Importance of Trademarks
• Trademarks are considered “repositories of
good will”
– Damages imposed (by a court of law) for infringement
can be very substantial.
• Tademarks are valuable property
– The trademark COCA COLA appears on the
company’s balance sheet as an asset valued at many
BILLIONS of dollars
• perhaps worth more than the company’s tangible assets

9. Importance of Trademarks (ctd)
• Mars Corporation spends more than US$20
million a year registering and protecting
trademarks
– BRW article
• Trademarks can be lost
– Use it or lose it – a competitor may apply to have it
unregistered if not used for a few years
– Don’t let it become part of everyday language
• Always use trademarks as adjectives, not nouns
• THERMOS, BAND AID, XEROX, VASELINE, …

10. Trademarks and Registration
• Unregistered trademark has some protection
– can sue a competitor for “passing off”
• Registeration offers stronger protection
• Unintentional infringement of trademarks
– May need to do an extensive search
– One way to avoid problems is to use geographic
names – these are difficult for others to trademark
– Trademarks can be re-used for unrelated products
• e.g., Apple Computers and Apple Music
• Company names not automatically trademarks

11. Patents: Introduction
• A patent is a right granted in relation to a device,
substance, method or process which is novel,
inventive and useful.
– Unlike copyrights, patents are designed to cover
ideas (more than one embodiment).
• Patents are property in the eyes of the law
– each patent granted in Australia cordons off
intellectual territory and assigns it to the applicant
(e.g. a foreign corporation)
– likewise, Australians can apply for patents (intellectual
territory) overseas

12. Patenting Costs
• To protect a single patent in Australia and the
U.S.A. only
– may cost $30,000 to $40,000 over lifetime
• To obtain protection for 2 or 3 related patents in
Australia, Japan, U.S.A. and Europe
– may cost ~ $200,000 over patent lifetime
• Legal costs in an infringement lawsuit
– typically exceed $1,000,000
• could exceed $10,000,000 and go on for years!

13. Patent Rights
• A patent is a monopoly
– granted for a limited duration
• 17 to 20 years, depending on the country
– a 3’rd party’s liability for infringement is not affected
by independent conception.
– patent is granted to the first to apply
• not necessarily the first to invent
• but, U.S.A. is different in that it has special “first to invent”
provisions.

14. Patent Rights (ctd)
• Gives you the right to sue an infringing
company/individual for damages
– this is a kind of negative right, in that it does not
inherently contribute to the development of products
based on the patent
• In many cases, a patent is not sufficient to
develop and sell products based on the
invention
– you may require processes which are patented by
other parties
– very common in complex systems

15. Philosophy of Patents
• Patents are designed to give protection to the
inventor of new technology
– that will lead to a product or process with
significant long-term commercial gain
• In return, patent applicants must share their
know-how
– by providing a full description of how their invention
works
– patents intended to discourage trade-secrets
• This information becomes public
– can provide a basis for further inventions by others

16. Patents Gone Mad
• # international patents growing rapidly
– from 2,600 in 1979
– to about 110,065 in 2003
• each of these represents patents in multiple countries -- ~8.5 million
national patents in all
• A successful application means the patent examiner has
found no objections
– this does not mean the patent will survive an infringement
lawsuit
– examiners routinely miss important prior art
– trend is to file patents with very broad claims
• tries to cover apps which inventor has not yet envisaged
– rejected patents sometimes re-filed immediately with minor
mods, hoping for a different examiner

17. Building on other Patents
• Many patents build on others
– novel ways of implementing a broader invention
described by an earlier patent
– improvements to an existing process
– combining existing inventions
• not sufficient for a patent in all countries
• Required only to show “inventive step”
– should not be obvious to a “person skilled in the art”,
given the existing knowledge available at the time of
filing
– ultimately a subjective test

18. Is One Patent Enough?
• Patents become public knowledge
– Allows others to patent novel improvements or
implementations of your invention
• This allows others to obtain monopoly rights on important
variations/incarnations of your ideas.
• May block you from exploiting your patent in the future
• To protect a fundamental new invention may
require several patents
– With a sufficient network of patents it may be possible
to manufacture & sell products based on your
invention, without licensing technology from others

19. Mistakes to Avoid
• If you demonstrate, sell or discuss your invention
in public before you file a patent application, you
cannot get a patent.
– includes publication in any publically available form,
including placing information on the internet
– includes incorporation of the invention in any product
available for sale
• even if not obvious from the outside
• You may talk to employees, business partners or
advisers about your invention but
– only on a confidential basis
– written confidentiality agreements are advisable
• Be wary of signing NDA’s requested by others
– can later be used to claim you stole their invention

20. Patent Exploitation Strategies
• Large firm
– cross-licensing
– patent treaties
– alternative technology to skirt around competitors’
patents – avoid licensing fees
– might have many seemingly trivial patents
• New startup company (examples)
– patent portfolio to support single product range
– IP-only firm – licensing & litigation is everything
– Hope to be bought out by IP-hungry giant

21. What Cannot be Patented?
• Purely mental processes cannot be patented
– e.g., artistic creations, mathematical models, plans or
designs.
• What about an ASIC layout?
– easily protected by copyright
– can be protected as a “registered design”
– registered designs concerned with form and
appearance, not fundamental ideas
• the David Jones pattern, design of a chair, …

22. Patents and Software
• Software itself is protected by copyright
• A software algorithm, however, can be patented
– at one point this was difficult to do
– now commonly accepted, but
– the algorithm must still be novel, inventive and useful,
and
– must be described in the context of a processing
platform (machine)

23. Got to here by Friday Week 9
Elements of a Patent
1. Field of the Invention
– often just one paragraph
2. Background of the Invention
– could be very extensive
3. Summary of the Invention
– overview of how it departs from existing background
4. Brief Description of Drawings
5. Detailed Description
– main body of the patent; must be done well.
6. Claims
– very important
7. Abstract
– used when search patent databases

24. Description vs. Claims
• The description section in a patent represents
the public disclosure of the invention to others
– should be sufficient to enable a person skilled in the
art to implement it
• Claims are the main basis on which infringement
actions will be fought
– they should, of course be related to the description

25. Claims Structure
• A typical patent contains 2 or 3 top-level
(independent) claims
– these must be sufficiently specific that they do not
include something which already exists, while being
as general as possible
• Subordinate claims progressively refine these
top-level claims
– done by explicitly referencing previous claims
– cover specific embodiments of the idea
• prevents others from subsequently claiming those
embodiments as novel improvements on your invention.
– serve as a second line of defense if your top-level
claims are rejected by an examiner or court of law

26. Example Claims:
[Text only; no equations or refs to description]
Who am I?
1. A method for transmitting data from a given source to a given
recipient, involving the steps of
a) multiplying each data value by a corresponding signal waveform,
b) accumulating said multiplied signal waveforms, and
c) delivering said accumulated waveform to said recipient.
2. A method according to Claim 1, where the data values appear
sequentially at regular time instants.
3. A method according to Claim 2, where the signal waveform
associated with a data value is formed by delaying a single pre-
determined signal waveform by an amount equal to said data value’s
time instant.
4. …
11. A method for recovering data values transmitted according to the
method of Claim 1, involving the steps of …

27. Provisional Application
• Inexpensive
– filing fee ~$100
– legal costs (not mandatory) ~$1000
• Gives you 12 months to consider the commercial
worth of your innovation
– subsequent patent can claim the provisional filing
date as the priority date
• Be careful to include a full set of “sample claims”
in the provisional application
– failure to claim something in the provisional may
cause you to lose the advance priority date for that
aspect of the invention

28. To patent, or not to patent?
• Provisional is a cheap (short term) form of
insurance
• Can file a PCT (international patent)
– allows you to defer the costs of obtaining patents
overseas, while you decide which foreign markets
should be protected
• Keep your innovation as a trade secret?
– have to assess risk of someone obtaining your
invention through industrial espionage or reverse
engineering.

29. To patent, or not to patent?
• Another alternative is to openly use and publish
details about your innovation.
– prevents someone else obtaining a patent for the
same thing
– but allows your competitors to freely use your
innovation for their own benefit.
• Cost of defending your patent can be huge
– 80% to 90% of patent infringement cases which are
brought to court are found against the plaintif
• partly because many patents are wrongly issued
– Most infringement cases settled out of court
• pay $1 million to avoid legal costs of $2 million.

30. Summary
• Patents are very important
– monopolies
– similar to property ownership
– coming up with an invention all by yourself does not
give you the legal right to exploit it.
• Key element of international trade
– major part of Australia-U.S.A. FTA in 2004
• Patenting is expensive
– not patenting may be much more expensive