Naturally, when you have an idea you want to share it with the world, whether that be to run it by potential customers or begin talks with potential suppliers. Unfortunately rights can be lost and others’ rights infringed when an idea is shared, so a little time and good advice before proceeding can save a lot of heartache.
Find the right adviser
The right adviser depends on the nature of your idea. Patent attorneys assist their clients to obtain patent and design protection, and advise on others’ patent and design rights. If your idea is a new product or process, a patent attorney is likely right for you. Patent attorneys each have a technical qualification as well as their legal training. Seek out an attorney whose technical qualification complements your idea. It’s no good talking to a chemist about your new mechanical product!
Trade mark attorneys advise their clients in relation to trade marks such as brand names and logos. If you are about to release a new trade mark, a trade mark attorney can check whether the new trade mark would infringe others’ rights and help you obtain your own rights in the trade mark.
Intellectual property (IP) lawyers often have their own specialities. An IP lawyer specialising in copyright is likely the best person to talk to if your idea relates to a work such as computer code or architectural drawing.
The Institute of Patent and Trade Mark Attorneys is a good place to find a suitable attorney (www.ipta.org.au).
Consider protecting your own rights
Sharing an idea without the right precautions can in effect give your idea away. Simply by sharing an idea, your valuable intellectual property could become ‘public domain’ meaning that your competitors could be well within their rights to copy.
So a critical step is to consider the costs and benefits of protecting your intellectual property. At this point a simple phone call to a patent attorney, trade mark attorney or intellectual property lawyer (depending on the nature of your idea) can be most valuable. Most attorneys and lawyers will gladly have a free of charge initial discussion outlining their preliminary thoughts on the appropriate form of intellectual property protection, the likely costs and your prospects of success.
Patents can be used to stop others copying important functional details of new products and processes. They last for up to 20 years.
To qualify for patent protection, the product and/or process should be kept secret and not sold or commercially used until a patent application is filed. Australia, the US, Canada and some other countries have 12 month grace periods which may allow you to pursue patent protection if your product or process has been made public.
The cost of the initial step of filing an Australian patent application is typically about A$4,000 or so, depending on the nature and complexity of the invention.
Design registrations can be used to stop others copying the appearance of new products. They last for up to 10 years. To qualify for design protection, the product must be kept secret until an application for design registration is filed. The initial step of filing an Australian design application typically costs about A$1,200 or so.
Generally speaking, patent and design applications should be filed sooner rather than later. The validity of patent applications and design registrations is assessed against information publicly available before an initial patent/design application is filed. Hence an early initial filing date reduces the risk of rights being lost due to highly relevant third party publications.
Trade mark registrations can be used to stop others using your trade mark in relation to selected goods and services. They can last indefinitely. The initial step of filing an Australian trade mark application typically costs about A$900 or so depending on the range of goods and/or services selected to be covered by the application.
Patent, design and trade mark protection can be pursued in parallel. This is often recommended.
Copyright provides protection for a wide range of ‘works’ including literary and artistic works. Generally speaking, copyright does not protect three-dimensional products once in production. Copyright is automatic. There is no need to apply for protection.
Instead of sharing your idea, you might choose to keep it secret. The law provides limited protection for trade secrets, although your idea is not protected from reverse engineering or from your competitors independently developing similar ideas.
Consider others’ rights
Sharing your idea could infringe others’ rights. It would be a very costly mistake to launch a nationwide marketing campaign for your new brand, only to be faced with a ‘cease and desist’ letter from your competitor’s lawyer asserting your new trade mark is deceptively similar to the competitor’s registered trade mark. A simple check of the trade marks database dramatically reduces the risk of such a letter.
Likewise reviewing the patent and design databases reduces the risk of infringing others’ patent and design rights. Such a review would be strongly recommended whenever you have reason to suspect that another might have relevant rights, and may in any case be prudent where your idea involves significant expenditure and/or sales of a substantial scale.
Indeed, others’ rights should be considered not only before sharing an idea, but much earlier before investing to develop the idea. It would be tragic (and expensive) to build a new production line to suit a new product, only to find that selling the product would infringe another’s patent rights.
What constitutes sharing an idea?
Thus far, we have loosely referred to ‘sharing’ in contrast to ‘keeping secret’. To preserve patentability under Australian law, details of the product and/or process must not be made ‘publicly available’ until a suitable patent application is filed. Information ‘communicated to any member of public who was free in law and equity to use it as he pleased’ is considered publicly available. Thus communication to a single individual can lead to a loss of patent rights.
The requirements for design registrations are similarly strict excepting that, for the purpose of an Australian design registration, non-documentary disclosures outside of Australia are not considered.
If I must tell someone
In an ideal world, suitable applications for patent and/or design protection would be in place before sharing an idea. However, this is not always possible. Perhaps customer feedback is required before deciding whether such applications are warranted, or the idea is not patentable or design registrable.
Sharing an idea in the context of agreed confidentiality will not preclude patent or design rights, although information made public by breach of the agreement may well do.
The confidentiality agreement could be a verbal agreement or even simply implied by context. Case law suggests that the sharing of an idea is confidential if the idea has ‘the necessary quality of confidence about it [and the sharing is] in circumstances importing an obligation of confidence’.
It is of course very much preferable to have a formal written ‘confidentiality agreement’ (AKA non-disclosure agreement or NDA) signed by the person(s) with whom you are sharing the idea, or at least have written correspondence showing that confidentiality was agreed upon before sharing the idea.
A formal ‘confidentiality agreement’ typically establishes a contract between the parties, in addition to evidencing the understanding of confidence, thus giving more certain recourse against a signatory to the agreement in the event of a breach.
Unfortunately, many organisations will not agree to confidentiality as a matter of course. This is particularly so in the case of large organisations when approached by individuals. Reviewing and settling the terms of a confidentiality agreement can be onerous, so the position of a large organisation flooded with numerous ideas of dubious merit is understandable.
Notice that we have merely suggested considering IP protection and others’ rights. Not all ideas warrant or qualify for IP protection. Likewise, deciding whether to investigate others’ rights should involve a commonsense assessment of the risks versus the costs of reducing those risks by investigating.
We strongly recommend contacting a professional in relation to both questions. Often businesses operate on false assumptions about IP protection. For example, businesses routinely assume that their new products and processes are not patentable and then lose profit margin to imitators, whereas a skilled patent attorney may well have been able to implement a patent strategy to hold the imitators at bay.
 Humpherson v Syer  4 RPC 407
 Coco v A.N.Clark (Engineers) Ltd  RPC 41