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IndustryArena Forum > Community Club House > General Off Topic Discussions > Patents, trade marks, designs and other inellectual property matters
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  1. #1
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    Patents, trade marks, designs and other inellectual property matters

    Hi everyone,

    I'm Dave Morgan, an electrical engineer and registered patent attorney (not currently practising) who has a combined total of around 20 years experience in these professions (the majority as a patent attorney).

    The purpose of this thread is as a forum for users to ask questions about and discuss any patent, trade mark, design or other intellectual property matters that may be of interest to them.

    I will do my very best to assist anyone who has a question that concerns intellectual property matters (and I assume that this applies to any other intellectual property practitioners who decide to contribute). However, please note that any information that I or anyone else provides here should not be construed or interpreted in any way as being formal legal advice. Under no circumstances should you act upon any information provided in this thread by me or anyone else before firstly obtaining formal advice from your own patent attorney/intellectual property practitioner.

    With that said, please feel free to start asking any questions or posting any comments that are relevant to the topic of this thread.

    Thanks.

    Dave

  2. #2
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    192

    Re: Patents, trade marks, designs and other inellectual property matters

    Do you agree with the red bus case?

  3. #3
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    Re: Patents, trade marks, designs and other inellectual property matters

    I personally don't agree with that particular UK copyright decision because I lean towards the traditional school of thought that copyright should not protect an idea but only the specific expression of the idea, otherwise the scope of protection is too broad.

    It's an interesting case and has some far reaching implications, particularly as far as digital photography is concerned.

    If anyone on this forum is running or working for a business that uses digital photography on their website or elsewhere, I'd encourage them to read the full decision which can be found here: http://www.bailii.org/ew/cases/EWPCC/2012/1.html

    You might even want to follow-up with your lawyer if you have any particular concerns about any possible ramifications the case might have your business.

    Please keep in mind that although it's a UK decision, there's always the possibility that it could be used as a precedent elsewhere, which is not unheard of in intellectual property cases.

    If there are any copyright lawyers out there, I'd be interested in your thoughts on the case.

    Thanks for taking the time to ask your question 1875.

    Dave

  4. #4
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    Re: Patents, trade marks, designs and other inellectual property matters

    DMorg

    Great topic lets hope this thread gets lots of support
    Mactec54

  5. #5
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    Dec 2013
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    Re: Patents, trade marks, designs and other inellectual property matters

    IMHO a patent protection is pretty much useless unless you have invented something completely new like the transistor or the light bulb. For other ''inventions'', unless your name is Microsoft, Apple, or otherwise have unlimited resources, you can't afford to defend the patent. The other use for a patent is to facilitate the sale of the intellectual property, in that it is well defined. This is why I patented one device, the buyer knew exactly what they were buying and it increased the value of the technology.

    If you are making a consumer item, build a lot of them, market the he!! out of them, and make some money for as long as you can. Because if it is a good seller, somebody else is going to make it better, faster, and cheaper.

  6. #6
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    Re: Patents, trade marks, designs and other inellectual property matters

    Dave, I appreciate the feedback and your position. I'm sure you are wanting to help specific situations. I will unfortunately just be able to provide general commentary.

    Jim, that's the truth. Dave Jones (AU EEVblog) has posted basically the same thing.


    Is G-code something that could be copyright? It is, after all, software code like any other. Could certain machining techniques be patented? It seems there are patents in other industries that could be analogous to something like climb milling, for example. If such a patent could be awarded, would that affect machine shops using the technique or any cam software that produced machine code using the technique?

  7. #7
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    5728

    Re: Patents, trade marks, designs and other inellectual property matters

    What if you've invented something that you're convinced is something that should be shared with all mankind, and while you're not that concerned with making money off it, you don't want it to be patented by someone else and made unavailable to the rest of humanity? Do you patent it and put the patent in the public domain? Or spread the idea around as much as you can, so nobody else can claim it's their own original idea? Or release it under some kind of "creative commons" license? What did Jonas Salk do with his polio vaccine to make it widely available at a low price?
    Andrew Werby
    Website

  8. #8
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    Re: Patents, trade marks, designs and other inellectual property matters

    Open patent might address that.

  9. #9
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    Re: Patents, trade marks, designs and other inellectual property matters

    DMorg

    Great topic lets hope this thread gets lots of support
    Thanks for the positive feedback, mactec54.

    If things die down on the thread, I'll endeavour to post something that provokes some thought to get things going again and stimulate thought and conversation.

    IMHO a patent protection is pretty much useless unless you have invented something completely new like the transistor or the light bulb. For other ''inventions'', unless your name is Microsoft, Apple, or otherwise have unlimited resources, you can't afford to defend the patent. The other use for a patent is to facilitate the sale of the intellectual property, in that it is well defined. This is why I patented one device, the buyer knew exactly what they were buying and it increased the value of the technology.

    If you are making a consumer item, build a lot of them, market the he!! out of them, and make some money for as long as you can. Because if it is a good seller, somebody else is going to make it better, faster, and cheaper.
    I agree that not all inventions warrant patent protection, even if they are actually patentable. As an example, if there's unlikely to be a commercially viable market for the invention, then there may not be much point in going to the trouble and expense of filing and prosecuting a patent application for it.

    Having said that, I remember an old attorney who I used to work for many years ago told me once that he had a client who just liked to invent things and patent them, and who wasn't concerned about making money out of the inventions. He also told me (and I agree) that he could think of better things to spend his money on than filing and prosecuting patent applications. I guess some people just like the challenge and sense of satisfaction of inventing and patenting something. I reckon the novelty would wear off after a while.

    In addition to selling patents, it's possible to license them (i.e. the patent owner retains ownership of the patent but they license one or more other parties to use/commercially exploit the invention that is the subject of the patent in return for some sort of consideration such as royalty payments).

    Licensing is really important. You'll probably find that one of the reasons that big companies in specific market sectors like Apple, Samsung, Google etc. have so many patents is because doing so gives them greater possibility of cross-licensing key patented technology to each other. Without being able to do this newcomers to such market sectors would probably find it impossible to setup shop without stepping on the toes of established players.

    As regards the cost of defending a patent, it's possible to obtain patent insurance that can assist with this.

    Dave, I appreciate the feedback and your position. I'm sure you are wanting to help specific situations. I will unfortunately just be able to provide general commentary.

    Jim, that's the truth. Dave Jones (AU EEVblog) has posted basically the same thing.

    Is G-code something that could be copyright? It is, after all, software code like any other. Could certain machining techniques be patented? It seems there are patents in other industries that could be analogous to something like climb milling, for example. If such a patent could be awarded, would that affect machine shops using the technique or any cam software that produced machine code using the technique?
    1875, no worries. All contributions which stimulate discussion on this thread are welcome here as far as I'm concerned.

    Also, I'm not actually practising at the moment so would not be able to act for anyone or give formal advice. Of course, this could change in the future, who knows. However, as a hobby machinist who has gotten a lot out of this forum over the years, my object with this thread is to just stimulate discussion and to give a little back to the community. I know that a lot of the people on here have an inventive mindset, so I figure that they might find it helpful to have a thread like this one that they can consult before going to their patent attorney or lawyer and getting formal advice.

    As far as I know, a specific G-code program would be automatically protected by copyright. The creator(s) of the program would own the copyright, unless they assigned ownership of the copyright to someone else via a formal assignment or some other agreement (e.g. a contract of employment).

    It may very well be possible to patent certain machining techniques. (Patents can be used to protect industrially useful methods.) Of course, to be patentable, a machining technique would in general need to be novel (i.e. not have been published) and non-obvious/inventive (i.e. not just trivially different from the "prior art "). To get a feel as to whether the technique is likely to be novel and non-obivious/inventive, a novelty search would need to be performed. (TIP: If you want to obtain a valid patent for an invention, do not publicly disclose or commercially use the invention before filing a patent application for it. If you do publicly disclose or commercially use an invention before filing a patent application, your invention may no longer be novel and inventive owing to such disclosure or use.)

    Of course, if such a technique was patented, and the patent was valid and enforceable, it would mean that others (e.g. other machine shops, manufacturers, etc.) would need to be careful not to use the patented technique otherwise they could potentially be sued for infringing the patent.

    To see if something would infringe a patent, it's necessary to compare that thing with the claims of the patent (Claims are just numbered paragraphs that formally define what the patent invention is). Basically, if the thing has all of the features recited in any claim of the patent, there will be prima facie infringement. (Please note that it's a bit more complicated than this, but this is essentially how patent infringement is determined.)

    What if you've invented something that you're convinced is something that should be shared with all mankind, and while you're not that concerned with making money off it, you don't want it to be patented by someone else and made unavailable to the rest of humanity? Do you patent it and put the patent in the public domain? Or spread the idea around as much as you can, so nobody else can claim it's their own original idea? Or release it under some kind of "creative commons" license? What did Jonas Salk do with his polio vaccine to make it widely available at a low price?
    Just publicly disclose it. Once publicly disclosed it will be part of the "prior art" and will no longer be novel or inventive. An invention must be novel and inventive at the time a patent application is filed for it in order for the invention to be patentable.

  10. #10
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    Re: Patents, trade marks, designs and other inellectual property matters

    Here is an interesting video on why not (and why) to patent a product


  11. #11
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    Re: Patents, trade marks, designs and other inellectual property matters

    Great video. Thanks for posting it, Jim.

    Towards the end of it, Ty mentions that it's possible to validly file a patent application for an invention within 1 year of publicly disclosing the invention. Please note that while this may be applicable in the US and some other countries like here in Australia, it is not universally applicable. For countries/regions where it is not applicable, if the invention has been publicly disclosed before a patent application for it has been filed, it will not be possible to obtain valid patent protection for the invention in such countries/regions. Therefore, assuming that patent protection outside of countries like the US and Australia which provide a 12 month grace period is desired, it is advisable not to publicly disclose an invention before filing appropriate patent applications for it.

    In addition to utility patents, which usually provide broad protection, and design patents (also known as design registrations in most other countries such as Australia), which usually provide much narrower protection, it is possible to obtain another form of protection. In Australia, such protection is provided by what we call an innovation patent. In other countries it is provided by utility models. Such second tier protection mechanisms can be used to protect functional innovations that may not qualify for utility patent protection. For example, if an invention is a manner of manufacture and is novel, but is does not involve an inventive step, it may qualify for innovation patent protection in Australia if it at least involves an innovative step over the prior art (an innovative step is a lower threshold of inventiveness compared to the more onerous inventive step/non-obvious requirement for utility patents).

    Unfortunately, as far as I know, such second tier protection is not available in the US. However, many countries (e.g. Australia and various European and Asian countries) outside of the US do provide for such protection.

    Second tier protection usually does not last as long as a standard patent. For example, if I remember correctly, an Australian innovation patent only lasts for a maximum of 8 years as opposed to a maximum of 20 years for a standard Australian patent.

    Second tier protection is usually cheaper to obtain compared to utility patent protection.

    I would also add that, irrespective of whether or not someone is going to protect their intellectual property such as an invention, design, or trade mark, if they intend to use their intellectual property, they should always give some thought to having appropriate clearance/infringement searches done before they actually start using it to make sure that they will not be infringing someone else's intellectual property rights if they do use it. Patents, design registrations, and registered trade marks are monopoly rights and, unlike copright protection, intentional copying does not need to be proven by a plaintiff in order to enforce such monopoly rights. Therefore, in general, even if someone innocently infringes someone else's patent, design reg'n, or reg'd tm (i.e. they do not knowingly copy the other party's patented invention, reg'd design, or reg'd tm), they can still be found liable for infringement.

    I also agree with John when he said that you get what you pay for with patents. The most important part of a patent is its claims, which define the scope of protection afforded by the patent. If the claims are drafted too narrowly it will be easy for a competitor to circumvent the patent and avoid infringing it so the patent will consequently have little commercial value. If the claims are drafted too broadly, they will not be valid and the patent will not be enforceable, and again the patent will have little commercial value. Therefore, care needs to be exercised when selecting a patent attorney to prepare and file a patent application. (If anyone's interested, I will post some information in a future post about how to go about selecting a patent attorney. Let me know.)

    Regarding John's reference to trade secrets, in my opinion trade secrets are really only good for protecting intellectual property that cannot be readily reverse engineered. For example, recipes (e.g. the Coca-Cola recipe), secret production processes and the like are the best candidates for trade secret protection. Also, if you want to keep something a trade secret, don't patent it because, as John said, if you patent something the patent and therefore the invention that is the subject of the patent will be published and will therefore no longer be a trade secret.

    Cheers,
    Dave

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