Intellectual property protection: it’s not patently obvious

man drawing intellectual property, related icons and words on whiteboard

So you think you’ve invented something – a new product or process? The first thing to do is hire a patent attorney to protect it, right?

Maybe not… There are many ways to safeguard your intellectual property (IP) and a patent may not be a realistic option or the smartest choice. Determining an IP strategy that best suits your invention, circumstances and business plan could be the key to long-term success.

Consider these sobering statistics from IP Australia:

  • It takes an average of around three years to complete the standard patenting process in Australia.[1]
  • Only about half of the standard patent applications made in Australia by Australian residents are eventually granted [2], usually because they fail to satisfy three essential criteria (novel, not obvious, useful)[3].

Then there’s the cost. To obtain and maintain a granted Australian patent for its 20-year lifespan demands more than $11,000 in government fees alone. In addition, it’s risky to file an application without purchasing assistance from a patent attorney, according to gemaker’s IP specialist and Senior Commercialisation Manager, Dr Ken Crane.

‘I recommend engaging a patent attorney to ensure that your patent application is worded correctly and has the greatest chance of passing smoothly through its examination,’ says Dr Crane.

‘But I also advocate that you don’t rush into the patenting process before doing your homework, because the significant financial investment required could easily outweigh your return.

‘Employing an attorney will add several thousand dollars to the cost of an Australian standard patent application. If you want to patent your invention in other countries as well, expect your expenditure to skyrocket.’

For example, Dr Crane estimates that acquiring and maintaining patents in Australia, the US and eight western European countries will cost around $350,000, including attorney fees. If competitors challenge your patents, further significant costs are likely.

With these formidable figures in mind, Dr Crane suggests that an inventor should contemplate the bigger picture of commercialisation and consider alternatives to a patent, to formulate their best IP strategy.

‘Patent attorneys know their core business well, but they’re not commercialisation strategists. In contrast, an organisation with broader commercial expertise can provide cost-effective advice on the best path for taking your invention to market, including options for IP protection.

‘Consequently, you’ll be able to determine any legal advice needed to formalise the right type or types of protection, and minimise the associated costs.

‘A good patent attorney should advise whether your invention could be patented, but they may not be able to advise whether it should be patented, nor offer alternatives beyond their scope.’


But if you don’t patent it, how can you protect your precious brainchild?

You might simply keep your invention a trade secret, which protects your IP to a limited extent by common law. This option is appropriate for nifty ‘know-how’ and for products that are difficult to replicate through reverse engineering. A famous example of a trade secret is the Coca Cola recipe.

‘Maintaining a trade secret costs nothing but diligence – it requires the strict use of confidentiality agreements with partners, associates and employees. Another advantage is that, unlike patents, trade secrets have no expiry date,’ Dr Crane explains.

However, this strategy doesn’t prevent a competitor from independently inventing and profiting from the same thing you created.

Alternatively, your creation may be covered by copyright, which is both free and automatic in Australia – you don’t have to register or apply for it. Copyright protects artwork, publications, films, music, recordings, broadcasts and computer programs.

Other types of IP protection include Design Registration, Trade Marks, Circuit Layout Rights (for computer chip designs) and Plant Breeder’s Rights.

‘You best IP solution may be one or a combination of these options, with or without a patent,’ says Dr Crane. ‘Careful market analysis and business planning will allow an informed decision.’

If your invention is not groundbreaking enough for a Standard Patent, it may still qualify for an Innovation Patent in Australia – a cheaper and relatively faster way to protect your creation.

While you’re pondering these alternatives, take care to keep your invention secret. If you write about it, sell it or discuss it in public, you may never be able to patent it, because it may be deemed to have lost its novelty. And it may not be protectable as a trade secret either. If you need to discuss your invention with anyone before you protect it, get them to sign a confidentiality agreement first.

Meanwhile, it may be advisable to make a Provisional Application for a patent. This establishes your priority date over potential competitors with similar ideas, while buying you 12 months’ thinking time.

‘A provisional application can keep your options open for a year and also reassure potential investors that you are serious about protecting your IP,’ says Dr Crane, ‘but care must be taken with the wording, so again, I recommend hiring a patent attorney.’

If you make too many changes to the description of your invention in a subsequent standard patent application, your priority date may be lost. You will also lose your priority date if you fail to file a completed patent application before your provisional application lapses.

A provisional application entitles you to request an International Type Search ($2,200 government fee) to identify similar existing inventions and help you decide whether to proceed with the patenting process. Dr Crane advises inventors to conduct their own investigations as well – for example, through detailed Internet searches and extensive reading in relevant fields.

‘Investing time in researching similar inventions may prevent an expensive and fruitless patent application and is essential to your business planning,’ Dr Crane says.


Eternal vigilance is the price of IP protection

An effective IP strategy requires expert advice and adequate resourcing not only at the birth of your business, but throughout its life.

Dr Crane says ‘Your IP protection will need updating as you develop new markets, or improve on your original invention. An organisation like gemaker can help you find the right path initially and play an ongoing role in monitoring and maintaining your strategy, to ensure that you reap the full rewards of your innovation.’

[2] Australian residents made approximately 2,500 applications in 2011. Three years later (the average time taken to complete the process), 1,199 patents were granted to Australian residents in 2014.

[3] Some types of creations are simply not patentable. If your invention does not fall into this category, then to be granted a patent, you’ll still have to convince the examiners that your invention is:

  1. novel – the idea or technology cannot already exist anywhere else (in an obscure journal from the Czech Republic, for example);
  2. not obvious or minor – it must result from more than the application of published information or standard knowledge in the relevant field, and be more than an incremental advance; and
  3. useful – specifically, substantially and credibly.


Dr Ken Crane is a commercialisation specialist with decades of experience. A physicist by training, Ken has parlayed his science expertise into a series of high profile roles within the commercialisation and IP space. Ken has extensive IP strategy and management experience most notably with hot rock technology company Geodynamics (publically listed GDY), Bionic Vision Australia, and nearmap (ASX Listed NEA). He commercialised laser technology from CSIRO co-founding a spin-off company ActionLaser and taking it to be a highly profitable company in a world-leading position in its market sector over 17 years. Ken’s expertise provides gemaker clients with specialist guidance along the path to market.