You Think You Have An Invention, What Next?

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Sylvie Tso

Sylvie Tso

Principal - Spruson & Ferguson Lawyers: Commercialisation, Trade Marks

You have a brilliant idea, which may be the next ground-breaking invention in your field of practice. Before you invest any of your time and financial resources in further developing the idea, performing feasibility tests and creating prototypes, there are a number of crucial issues which you should consider. Some initial key issues are summarised in this article to assist you to make the most out of your invention.

Do you own the invention? 

In general, an employer may claim ownership of any intellectual property created by an employee arising “in the course of employment”.  If you are employed by a university, a hospital or a research institution, even on a part-time basis, there is a possibility that the university, hospital or research institution may be entitled to claim ownership of your invention if it is created “in the course of your employment” with them.

Whether an invention is created by an employee “in the course of employment” will depend on a number of factors. These include, in general:

  1. whether it is within the duty of the employee to create the invention;
  2. whether the employer has directed the employee to create the invention;
  3. whether the employee has used the confidential information or intellectual property of the employer to create the invention; and
  4. whether the employee has used other resources of the employer (e.g. computers) to create the invention or develop the invention during working hours.

In addition, an employee may owe “fiduciary duties” to an employer (e.g. where the employee is also a director of the employer company). In some circumstances, when there is a breach of such “fiduciary duties”, a court may require an employee to forego ownership of the invention created by the employee in breach of such duties.

If you are an employee of, or otherwise affiliated with a university, hospital or research institution, it would also be prudent to review your employment contract, as it may contain clauses that go beyond the above general position, such as automatically transferring ownership rights to your employer of any invention you created during the term of your employment, regardless of whether the invention arises from the “course of your employment”.  Lastly, you should check the intellectual property policy of the organisations with which you are affiliated regarding ownership of inventions. 

If you plan to engage someone to assist with the development of your invention (e.g. a software developer), you should enter into a contract with such person to ensure that all intellectual property generated by that person is to be assigned to you. In general, in the absence of any contract which provides that ownership of such intellectual property is owned by you, such intellectual property will be owned by your contractor.

To publish or not to publish

Do not publish or present (or submit to publish or present) your invention before you seek advice from your intellectual property advisor. This is because publishing or presenting your invention in journals and conferences may compromise the scope of protection you may obtain for your invention. For example, if you wish to protect your invention by seeking a patent, the invention must satisfy certain criteria before the patent is granted. One of these criteria is that the invention must be novel (or new) when assessed against the “prior art”. If you publish a paper or present your invention in a conference before you file for a patent, your paper and your presentation may be cited against your own patent application as “prior art”, although there may be a “grace period” (depending on the jurisdiction for which you are seeking a patent) for certain types of disclosure, which allows the invention to satisfy the novelty criteria if the patent application is filed within a certain period, notwithstanding the disclosure.

Keep it confidential

It is vital that you keep any information about your invention confidential. The people to whom you disclose your invention may think it is a brilliant idea and file for patent protection before you. If you need to discuss your invention with third parties for the purpose of collaboration or engaging them to perform work for you to further develop the invention, make sure there is a contract in place that contains confidentiality obligations and addresses intellectual property ownership issues.

Secretly using your invention for commercial purposes may also destroy the patentability of your invention.

Seek protection

Not all inventions may be protected by patents.

A patent is, generally speaking, a right granted by the government of a country to the patent owner, allowing the patent owner to exclude others from commercially exploiting the invention within that country. If you wish to seek patent protection in multiple countries, you will need to apply for patent protection in all those countries.

Although patentability requirements may differ slightly in different countries, in general they are similar. In Australia, the key patent requirements include:

  1. novelty – the invention must be new and not disclosed publicly in any form, anywhere in the world as at the date of the first filed application;
  2. inventiveness – the invention must be more than an obvious extension, variation or combination of prior inventions which could be brought about by an ordinary person skilled in the art;
  3. utility– the invention must be useful, i.e. the invention should achieve what you say it will;
  4. manner of manufacture – the invention must have resulted from human activity, i.e. it is not a naturally occurring substance, or a natural phenomenon (e.g. discovery of the law of gravity). A mathematical formula describing a natural phenomenon is not a manner of manufacture and will not be patentable.

Intellectual property takes a number of forms, each with its own specific manner of protection. If your invention is not patentable, other forms of intellectual property protection may be available. For example, computer programmes may be protected by copyright; appearance or visual features of a product may be protected by design registrations; or you may simply wish to keep your invention a trade secret.

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To bring an invention to commercialisation is not a simple exercise. Early consideration of how the invention may be protected will assist in reducing the number of issues that may arise at a later stage, which may compromise your scope of protection and in turn, the commercial return of your invention. 


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