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When you have a good idea, the desire to shout from the roof-tops immediately and tell the world can be difficult to quell. But taking a moment to think about the impact this may have on the commercial value of your idea can be just as important as the idea itself.

This is essential where the commercial value of your innovations depend on your ability to obtain patent or registered design protection.

It may be that you see the immediate success of your innovation, and an opportunity to bring the idea to market if you act quickly. Often however, taking steps to protect the innovation may lead to a longer market life for your product and increased profits for your business.

 
The basic rule

The first rule of intellectual property is this: protect it first, use it second. Consider this as the first piece of the puzzle that needs to be in place.

The general principle for patent and design protection is that you can only protect what has not been done before. In other words your innovation or product design must be different to the current state of the art. Whether your innovation is sufficiently different will be measured by an assessment against "prior art" which exists before the date you present your patent or design application at the Intellectual Property Office of New Zealand (IPONZ) for legal protection.

Prior art is not discriminatory. The prior art consists of whatever was known or used before the application date including whatever was used and disclosed about your invention by you!

The prior art therefore can just as easily be your own innovation having been used or published, as it can be a similar innovation used or published by someone else. In other words if you show your innovation or tell others about it before applying for protection it will form part of the prior art, leaving you with no opportunity to enjoy registered legal protection for your innovation. You generally don't get a second chance.

However, like many rules there are exceptions.

 
New Zealand exception

In New Zealand you can disclose your innovation in certain situations before filing an application for protection.

One of these situations is when the disclosure of the innovation occurs at a "Gazetted Exhibition". An exhibition becomes "gazetted" when an application is made, and permission is given by IPONZ. When gazetted, any innovation disclosed during the exhibition will not form part of the prior art, at least for New Zealand patent and design applications yet to be filed.

There is, as always, a proviso and it is this: an application for a patent or registered design needs to be made within 6 months of the gazetted exhibition opening. Consider gazetting as a further piece of the puzzle.

Examples of gazetted exhibitions include the annual field days at Mystery Creek, the recent prize giving for Spark* (the University of Auckland Entrepreneurship Challenge) and many school or regional science fairs.

Brilliant I hear you say, you gazette, I disclose, you protect: now we are off on the path to protecting this innovation around the world. Unfortunately there is another exception. Display at a gazetted exhibition has benefits only to applications for patent and registered design filed here in New Zealand. Thus while your patent or design is unaffected by displaying your innovation at the gazetted exhibition, this same disclosure may be relied on in other countries, say Europe, to prevent valid patent protection being obtained in the European Union.

This might be fine if you intended only to protect the innovation here in New Zealand. But what if you want to protect your innovation overseas? Some countries have what is known as a grace period. This essentially allows you use or show your innovation to the public, and again, so long as you file an application for protection within a specified time frame. If you do so your own public use or showing cannot be used against you. Countries that have a grace period include Australia, the US, and Canada. Each of these countries has a grace period of 12 months. However before relying on the grace periods you should seek legal advice on the wisdom of doing so. This is the third piece to the puzzle.

But, I hear you cry, what happens if I want to protect in a non-grace period country?

In that case we fall back to the basic tenet of intellectual property: protect it first, use it second. Following this rule of thumb will give the greatest flexibility for a protection strategy. There are ways to protect innovations overseas, but that is another article.

 
The puzzle completed

Taking all these pieces now, we can put them into the following example. A hypothetical client has displayed its new product at the Fieldays. Provided they apply for patent or design protection (or both) within 6 months, the display at the Fieldays will not affect the validity of the patent or design. They can also still file in Australia, the US and Canada within 12 months of first displaying their innovation. If they wanted to consider more countries, they would have to file for protection before the display.

Whenever you file to protect an innovation, there is always the risk that someone is working on the same idea, and may beat you to the patenting post, so to speak. They say the first to file is best dressed. The best move is to apply for protection as early as possible.

At the very least then, there should be a strategy in place as part of the business plan for new product development to expose the new product in a measured and considered way. Hopefully this strategy includes a plan to protect the intellectual property in the product.

Your best next move? Contact an intellectual property expert first. At the very least, an expert can tell you what you should and should not do, and put you on the right track.

 

Acknowledgements:

This article was kindly supplied by Duncan Schaut, patent executive at AJ Park, Auckland. duncan.schaut@ajpark.com
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