By Rhys Munzel, Patent Attorney & Senior Associate
It is very common for businesses introducing a new product to the market to consider intellectual property protection after the product has successfully launched.
A business may say, “this is selling well, how do I stop my competitors from copying my product?”
Business are then surprised to learn that their own sales or advertising of their product can be held against them in seek patent or design protection.
Most understand that an invention needs to be new before it can be validly patented or registered in respect of a design. For example, one cannot re-patent the radio or the television as these technologies are decades old. But what is meant by “new”?
It is important that an idea not have been publicly disclosed before a patent or design application is filed. This means keeping the idea must be kept secret and not have been advertised, sold or used in public.
For those contemplating bringing out a new product, the most helpful advice we can provide is “KEEP IT SECRET”. Speak to your lawyer or a patent attorney before disclosing your idea to anyone.
But what to do if the horse has bolted? Is all lost?
Not necessarily. Many countries (though certainly not all) provide “grace periods”. This is when a business can apply for a patent or design after it has been published.
This allows a business who has just started marketing their product to take steps to protect their idea.
Each country or territory will have its own rules around any grace periods it provides.
Luckily, Australia provides decent grace period rights for patent applicants (providing a grace period of up to 12 months). Australia is also about to implement the same for design applicants.
Another country which provides grace period rights include the US (where a 12 month grace period is provided). However, in terms of major markets, it is worth noting that the European Patent Office provides very limited to practically no grace period rights for patent applicants.
Key Takeaways
Therefore, importance of KEEPING YOUR IDEA SECRET until you have spoken to a professional cannot be understated. If you do need to disclose your idea outside your business, use a non-disclosure or confidentiality agreements. This will keep your rights in place until you decide whether to file for design or patent protection.
