A patent provides a temporary (typically 20 year) monopoly whereby a patent owner can prevent a third party from exploiting an invention. Businesses can use this monopoly to mitigate competition and to capture market share. A company's patenting activities often have a significant positive impact on medium to long term business success. A strategic approach to patenting is also an extremely effective mechanism for capturing the fruits of research and development

Griffith Hack is experienced in securing patent protection for our clients' clever ideas and helping them capture the results of their research. Our patent practitioners are trained in a wide range of technical disciplines which allow them to penetrate our clients' technologies. Where an invention embraces a number of technologies we can bring together practitioners with different technical backgrounds to effectively support our client's needs.

We provide our clients with timely and clear advice which allows them to place their patenting activities in a commercial context and make commercial decisions. Just as our clients are at the forefront of developments in their technologies, so to are our patent practitioners at the forefront of developments in patent law, for example, what can be patented and how this can be achieved.

Our services include:

• Advising on the patentability of inventions.
• Preparing patent specifications.
• Conducting searches of patents and technical literature.
• Filing and prosecuting patent applications in Australia and overseas.
• Conducting infringement searches.
• Investigating the validity of patents.
• Filing and conducting oppositions to the grant of patents as well as defending applications against oppositions.
• Defending against allegations of infringement.
• Enforcing patent rights against infringers.
• Negotiating and settling patent disputes.
• Patent watching, monitoring and surveillance.

Searching and Watching

Before committing to launching a new product or to a worldwide patent filing programme, it is advisable to conduct a search to determine whether the new product infringes an earlier patent or whether the invention is novel.

Infringement searching can provide a level of assurance that once a product is launched it will not need to be withdrawn at a later date because it infringes the rights of another party. Novelty searching allows clients to assess the prospects of successfully obtaining patent protection.

Griffith Hack has access to all major international subscription databases. These databases provide cross-referencing and indexing combined with powerful search engines and allow us to conduct thorough searching.

Patents also provide a vast resource of technical information which can be searched to assess the state of development of a technology or to find out what your competitors are doing: not only to see whether their patenting activities will affect your business but also to see whether they have made any interesting developments.

We also offer watching services in order to monitor the activities of others - for example particular applications of interest can be watched so that opposition proceedings can be initiated if they proceed to grant with broad claims.

Evaluating Infringement

In a competitive environment, competitors will seek to enforce the commercial advantage provided by their own patent protection. It is not always possible or practical to conduct a search for patents which you may infringe and often the first time our clients know about a competitor's patent is when a letter of demand arrives.

Griffith Hack can assess whether the demand is justified. Our attorneys have particular skill in construing the scope of protection provided by a patent, determining whether that scope is justified (i.e. whether the patent is valid), and determining whether a product or process falls within the scope of a patent and hence infringes it.

Should your invention be patented, Griffith Hack can also advise whether a competitor's product infringes your patent.

IP Audits and Due Diligence

IP Audits

An IP audit is a comprehensive analysis of a company's IP assets which identifies and documents those assets for future use. IP assets can be put to work for the ultimate success of your business. Once identified, IP assets can:

• Be protected to ensure future value as an asset, safeguard a valuable revenue stream and provide a competitive edge;
• Be brought to account on your balance sheet, thereby boosting the net worth of your business; and
• Increase your business' profitability through licensing, selling or raising finance against them.

IP assets may reside in many areas of a business, and can include patents, trade marks, industrial designs, copyright, confidential information, circuit layout rights, plant breeders rights or the goodwill associated with a business. Griffith Hack interviews and works with the appropriate people in your organisation and examines key documentation before compiling a report on the current state of your IP assets and a list of recommended actions. The review will be framed within the context of your industry and the commercial environment in which it operates.

Our professional staff and our Griffith Hack Consulting team are highly experienced at conducting IP audits in a wide range of industries such as information technology, manufacturing, retailing, health care, agribusiness, finance and petroleum as well as research institutes and universities.

Griffith Hack Consulting is part of the Griffith Hack group, incorporating our national patent and trade mark firm and our specialist IP and information technology law firm. As such, the consultancy can draw on the expertise of patent attorneys and lawyers in offices in Melbourne, Sydney, Brisbane and Perth.

Due Diligence

Due Diligence usually involves the analysis of a company's patent position.

Due diligences are particularly useful when assessing the value of a patent portfolio which is to be licensed or acquired. They can also provide a useful resource during capital raising. Griffith Hack can:

• Advise whether a patent covers the commercial embodiments which it is intended to protect and confirm that the patents are in force;
• Advise on the scope of protection forwarded by a patent portfolio.

Conducting a due diligence can establish whether a company is really getting what it is paying for or conversely convince others of the value of investing in a business.

Enforcing and Defending your Patent

At some point during the term of a patent, a competitor may wish to exploit your invention. A competitor may knowingly copy the invention without seeking your approval, or may innocently infringe your patent by independently arriving at the same invention. Our litigators are skilled in enforcing patents.

Griffith Hack can assist in enforcing your patent by:

• Advising how to correctly mark an invention to advertise your patent rights.
• Watching for new patents that may infringe your patent.
• Negotiating license agreements.
• Assessing the prospects of successful action.
• Advising potential infringers of your patent rights.
• Bringing actions before the courts to prevent infringers from using your invention.

Competitors may seek to have your patent rights partially or completely revoked in order to prevent you from succeeding in an infringement action, allowing them to exploit your invention. Griffith Hack can assist in defending patents by providing an analysis of any attempt to validate your patent and advising how it can be defended.

Patent Licensing and Technology Transfer

A patent licence can provide a company with a valuable income stream or allow it access to technology developed by others. Companies turn to Griffith Hack for the negotiation and drafting of clear, effective and workable agreements and for advice in relation to licensing issues and disputes. A well-drafted licence agreement is a pre-requisite to a successful licensing programme.

Griffith Hack's transactional lawyers are able to advise on all aspects of the licensing and transfer of patents, including the transfer of know-how and the effect of licences/joint ventures on future intellectual property ownership.

Renewals

Intellectual Property Offices in most countries, including Australia, charge periodic fees to keep patents.

In Australia the renewal fees for a standard patent are charged annually and fall due from the fifth anniversary of the filing date in Australia. Renewals for an innovation patent fall due from the second anniversary. For a PCT application, the filing date is taken to be the international filing date. The renewal fees are initially a few hundred dollars, and increase on a progressive scale.

It is imperative that deadlines for paying renewal fees be closely monitored. Failure to pay a renewal fee by the required deadline may result in loss of your Intellectual property rights.

Griffith Hack can refer the details of your application to our associate firm, Computer Patent Annuities Limited Partnership (CPA). CPA is a specialist renewals organisation who attend to renewal matters for clients throughout the world. CPA sends reminders and quotations to clients, takes instructions from them, and attends to the payment of their renewal fees.

Filing Within Australia

Once a decision has been reached to seek patent protection, Griffith Hack can undertake all the necessary steps to seek patent protection both in Australia and overseas.

The first step in obtaining patent protection in Australia and overseas usually involves filing a provisional patent application with IP Australia (the Patent Office). A provisional application includes a written description of the invention, and filing it establishes a priority date for the described invention. The priority date is the date at which the novelty of an invention will be assessed. The application will have priority over other later filed applications or published documents, and they will not invalidate any patent subsequently granted for your invention.

Griffith Hack's patent attorneys have extensive experience and training in drafting patent specifications to accompany patent applications.

After a provisional patent application has been filed, the invention described may be freely disclosed without prejudicing the possibility of obtaining patent protection. However, it is often prudent to keep the invention a secret and it is essential to advise Griffith Hack of any subsequent modification before disclosing the details of these modifications, as they may not be covered by the original application.

To maintain the priority date established by a provisional patent application a complete application for the invention should be filed within one year of filing the provisional application both in Australia and overseas. The specification of the complete application is based on the provisional specification, but should also include details of any modifications or improvements to the invention.

As an alternative to filing complete applications in Australia and overseas it is possible to file an International (PCT) application. A PCT application allows the filing of complete applications and any overseas application to be delayed for up to 30 months from the priority date while providing an opportunity to further evaluate the merits of pursuing patent protection.

Once a complete application is filed, the Australian Patent Office will usually direct an applicant to request examination of the complete specification about two years after the filing date of the complete specification. During examination a patent examiner will search for earlier published documents to determine whether the invention is novel and inventive. The Australian Patent Office will issue an examiner's report outlining the details of any relevant documents located by the search, and any other objections raised by the Examiner. A similar examination process occurs in other countries.

Objections raised in examination can generally be overcome by amending the complete specification and/or presenting counter arguments. If the objections can be resolved, the Australian complete application is accepted and advertised accordingly in the Australian Official Journal of Patents. Once advertised, third parties can oppose the application. Providing there is no opposition, or an opposition is unsuccessful, the patent is sealed and a deed of letters patent is issued.

In Australia the term of a patent is usually 20 years from the filing date of the complete specification. Renewal fees for maintaining the patent are payable every year from the fifth anniversary of the filing date of the complete specification.

Overseas Protection

Australia is a signatory to an international convention, which allows a patent application to be filed in most overseas countries within one year of the priority date. Under this convention, the overseas countries will treat the application as if it had been filed on the priority date and assess the novelty of the invention accordingly.

Griffith Hack is able to arrange for applications to be filed in any country that has a patent system. For more details see our Global Services.

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