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Kings Expands its Patent Practice

Kings is expanding its patent practice with the appointment of accomplished patent attorney, Jonathan Lewis.

Jonathan’s expertise has been honed over many years as part of some of Brisbane’s premier IP practices, particularly in the preparation and prosecution of patent applications.  Jonathan has an extensive background in the chemical and mechanical engineering fields, including minerals processing, extractive metallurgy, industrial processes, medical devices, mechanical devices and packaging technology.

Jonathan studied metallurgical engineering at RMIT University and has a Masters in Chemical Engineering from the University of Cape Town, as well as well as a Masters of Industrial Property from the University of Technology, Sydney. Jonathan has also worked in many aspects of the mining and minerals industry from being a plant metallurgist at Ernest Henry Mining in North Queensland, to research at the University of Cape Town in South Africa and consulting at JKTech in Brisbane.

Prior to working in private practice, Jonathan worked as a Patent Examiner at IP Australia in Canberra.

Jonathan prides himself on his client relationships, and has a strong focus on helping clients to obtain commercially-valuable intellectual property.  Jonathan said that he was attracted to Kings for the opportunity to be part of a modern, independent patent and trade marks attorney firm.

Can I patent that trade mark or trade mark that patent?

Come join us on 8 June 2021 from 9am-11am at the Brisbane Business Hub.  

Clinton and Jack are excited to be holding a free workshop giving businesses practical and useful insights into understanding and protecting their most valuable assets – their intellectual property! 

We will also be providing some easy-to-use strategies for avoiding intellectual property issues. 

Register here: https://businessinbrisbane.com.au/events/understanding-intellectual-property/  

Patent Basics

Patents are one of the least understood forms of intellectual property. There are misconceptions that patents are only for complex or revolutionary items like the light bulb. While the light bulb and many complex contraptions have been protected by patents over the years, patents have much broader applicability.

An example of a patent design by Thomas Edison

What is a Patent?

A patent is a right that protects the functionality of a product, process or system (in contrast to the look/appearance or name of a product, process or system). Anything new, useful and involving some ingenuity or exercise of inventive skill may be patentable, including items, software, microorganisms and pharmaceuticals. A patent may be used to exclude others from exploiting an invention but can also be used to license the invention to third parties.

What are the Requirements for a Patent?

The invention must not be publicly known, anywhere in the world.

You should conduct searching to ensure that your invention is not known previously.  Great technology known in Japan, for example, cannot be patented here in Australia, even if you were the first to bring it here, and even if you were not previously aware of its presence in Japan.

Resources for conducting patent searches include:

This also means that you must be careful of your own publications.  Do not put your great idea on the Internet or social media before protecting it.  In Australia and the United States there is a 12-month grace period for your own disclosure, but in most other countries, self-publication may prevent you from obtaining patent rights.

The Invention must be Inventive

The difference between your invention and what was previously known must be non-obvious, and generally be associated with a benefit or advantage. It is a common misconception that an invention needs to be complex or a breakthrough in order to be inventive. Inventions having simple or small improvements can be patentable, provided that the improvements result in significant advantages.

Similarly, for inventions that comprise a combination of elements, the requirement of inventive step may be met, even if each single item is obvious when considered individually. Innovation patents, which are currently being phased out, have a lower inventive threshold.

What is the Process for Filing a Patent Application?

When applying for a patent in Australia, it is necessary to submit a description of the invention (known as a “patent specification”) with the Patent Office. The invention should be described in sufficient detail in the patent specification to enable a “person skilled in the art” to put the invention into effect, without the need to exercise further inventive skill or ingenuity.

The filing of the patent specification with the Patent Office establishes a “priority date”. Early establishment of a priority date is important as it is the date used to assess the novelty and inventiveness or innovativeness of the invention.

As the patent specification defines your invention, and the scope of monopoly sought, we strongly advise having the patent specification professionally prepared, and would be happy to assist with this. 

When can I tell the world about my invention?

Any public disclosure or commercial use of a patented invention after the priority date will not prejudice the validity of a patent ultimately granted on a patent application. Therefore, once a patent application has been filed, the invention as described in the specification (filed with the application) may be freely advertised, sold or otherwise disclosed to the public.

Get in touch with our team today

As there are a lot of factors to consider, we strongly suggest utilizing a registered patent attorney to assist with the filing of a patent application. At Kings IP, we offer a no-cost, no-obligation initial consultation to discuss your patent options and provide initial advice. Get in touch with our team today to discuss patenting needs.

Patenting During Downturns

From 1929 to 1939, Australia, like other nations, suffered during the Great Depression. Australian unemployment reached a record high of around 30% in 1932. Fast forward about 90 years and Australia, like most of the world, is again facing the possibility of another great depression spurred on this time by a pandemic.

However, the Great Depression was also a time of great ingenuity driven by a combination of necessity, boredom and the great human spirit of survival. We have The Great Depression to thank for the following five handy items that are still in use today.

  1. The Electric Razor – patented in 1930 by Colonel Jacob Schick who grew tired of lathering his face to shave in cold water.
  2. The Car Radio (1930) – invented by Paul and Joseph Galvin. Legend has it that the invention was conceived while the brothers were on a double date.
  3. The Tampon – invented by Dr Earle Haas (a man) out of sympathy for his wife, who was unable or unwilling to go swimming during her period.
  4. Chocolate Chip Cookies (1933) – invented by Ruth Graves Wakefield allegedly by accident while trying to make a chocolate cookie.
  5. Monopoly (1935) – patented by Charles Darrow while he was out of work. He was inspired by observing friends and neighbours playing a homemade board game where the object of the game was to buy and sell property.

So, while these may be difficult times, there is some comfort in knowing that another chocolate chip cookie-type invention is just around the corner. We at Kings have great confidence in the Australian fighting spirit.  Who knows?  Maybe the next Hills Hoist-type invention may be appearing in a backyard near you.

#weareinthistogether

COVID-19 Trade Mark Application Filed At Australian Trade Marks Office

Like after other recent major events and disasters, trade mark applications are being filed in an attempt to profit from the recent COVID-19 virus outbreak.

On the 19th of March 2020, a Brisbane-based individual filed a trade-mark application for COVID-19 for a wide range of services, including “News reporters services”, “Publishing of documents”, “Publishing of newspapers” and “Electronic publication of information”.

Why would someone file such a trade mark application?

A registered trade mark provides the owner with the exclusive right to use the trade mark, which can include licensing the trade mark (e.g. allowing others to use the trade mark in exchange for a license fee).

While we can only speculate as to the motives of such trade mark applicants, it could be an attempt to get paid every time the term is used in media, and thus profit from reporting on the COVID-19 virus outbreak.

Does that mean we have to pay to use the word COVID-19 in media?

No.

The application is currently awaiting examination, and thus has not been registered. Furthermore, we do not expect the trade mark to be registered.

Firstly, there is provision within the Trade Marks Act to reject trade marks which are “scandalous”.  IP Australia has used such provision to reject trade marks relating to disasters previously.

Secondly, there is provision to reject trade marks on the basis that other traders should be entitled to use the mark with respect to the services being sought, or that the trade mark could not be adapted to distinguish one trader from the other.

While a relatively new trend, unfortunately this has happened before.

A Kuala Lumpur based company sought to register a trade mark for “MH17” after flight MH17 was shot down over Ukraine.  This was quickly rejected by the trade marks office.

An Australian company sought to register a trade mark for “MH370” after flight MH370 went missing.   This application was also rejected by the trade marks office. In short, IP Australia found that the word “MH370” conveyed a specific meaning to ordinary Australians as the flight number of the missing Malaysian Airlines aircraft, and it therefore could not be used to distinguish one trader from the other.

We do not believe that COVID-19 will be registered for the services being sought, and do not believe that it is registerable.  We believe that the COVID-19 conveys a specific meaning to ordinary Australians, and thus cannot distinguish one trader from another, particularly in the context of publishing information.

Even if it were to be registered, such registration would not preclude others from using or referring to the term in a descriptive sense.

Lesson about self-filing

The applicant of the COVID-19 appears to have used a do-it-yourself trade mark filing service (DIY TM LIMITED).

Many of these services simply file a trade mark application without any review by an attorney.  As a result, you may be filing a trade mark application which, from the outset, is invalid.

The risks with a self-filed (or DIY) trade mark application are not only wasted time and money.  If the trade mark is valuable to you (e.g. your brand) – you may have the mistaken belief that you are protected, when your brand is in fact vulnerable.

Please contact us if you would like discuss trade marks or your intellectual property.

Innovation Patents Are Being Phased Out – What Does That Mean For Me?

Innovation patents currently exist in parallel to standard patents and enable protection of inventions that do not necessarily meet the inventive step threshold for standard patents.  They are also a quick and relatively inexpensive way of obtaining strong patent rights, as they are harder to invalidate.

The process of phasing out the innovation patent has, however, unfortunately begun.

I have an innovation patent already – what does this mean for me?

Existing innovation patents, and innovation patents filed on or prior to 25 August 2021 will continue their full term (provided that renewal fees are paid).  You do not need to take any new action to keep your existing innovation patents in force.

Certification of innovation patents remains unchanged and may be performed at any time during the life of the innovation patent.

I have a standard patent application – what does that mean for me? 

Standard patent applications filed on or prior to 25 August 2021 will be able to converted to innovation patents at any time.  Innovation patents have a term of 8 years, and as such, this conversion must be done prior to the end of term of the innovation patent, calculated as if the standard patent had been originally filed as an innovation patent.

Divisional innovation patent applications will also be able to be filed provided that the parent application is currently pending, and was filed on or prior to 25 August 2021.

I have an idea – what does that mean for me?

The last day you will be able to file a “new” innovation patent will be 25 August 2021.

Even if you wish to file a standard patent application, it is beneficial to file such application on or prior to 25 August 2021.  In particular, if you file the standard patent application prior to the cut-off date, this gives you the option to file a divisional innovation patent application at a later stage.  This can be particularly useful if enforcing your rights against an infringer.

Please feel free to contact us at mail@kingsip.com.au or on 07 3088 8009 if you have any queries about innovation patents.

Lo – The First Message On The Internet

On 29 October 1969, UCLA student Charley Kline attempted to transmit the text “login” over the first link on the ARPANET – the precursor to the modern Internet. However, the system crashed after the letters “lo” were transmitted, making “lo” the first message ever sent on the internet. And just like back on 29 October 1969, we at  Kings Patent & Trade Marks Attorneys  “Kings” are today sending our first message out over the internet.

“Lo” –welcome to Kings!

We are a proudly independent patent and trade marks attorney firm, located in Brisbane, Australia. We specialise in helping people and businesses obtain high-quality patent, trade mark and design protection. From individual inventors to multi-national corporations, we are committed to your long-term success. We pride ourselves on our responsiveness, attention to detail and strategic thinking.

Just like back on that fateful day in October 1969, we embrace technology and the efficiencies modern technology provides. If you have a query day or night, we are here as your trusted IP advisor.

So, once again “lo”!