Patents: getting them right

K&L Gates’ Alex Dunlop and Steven Wulff advise designers on patents.

When considering intellectual property in the clothing and footwear industries, the focus is usually on trade marks, designs and copyright. However, it is important that patents are not forgotten.

Businesses often invest considerable time and resources in developing new products and processes which can be protected by a patent. Patents can be used to protect your inventions from unauthorised use and maintain the competitive edge your inventions give you in the market. Patents can also be valuable assets that can be sold, encourage investment in your business, as well as generate an income stream through licensing.

Contrary to popular belief, obtaining patent protection is not expensive, especially when the cost of protection is usually a tiny fraction of the investment made in developing new products or processes and the competitive edge that they can provide.

In this article, we set out some of the basics that you should keep in mind to utilise the patents system to your advantage.

What do patents protect?

Broadly speaking, patents protect how something works or is manufactured, rather than how a product looks. Business methods can also be patented.

For example, patents can be granted for textiles that meet the requirements for patentability. Nylon was patented in the 1930s, and there are many examples of "smart" fabrics (which for example wick away moisture) that are patented today. Compression garments are another example. While the visual appearance of say, compression tights may change from season to season, the underlying technology (such as the way in which a garment is manufactured, for example using 3D knitting techniques) can be protected.

The same is true of footwear. While styles and fashions may change, underlying aspects (such as a novel cushioning system, or a particularly lightweight construction method) may be capable of patent protection, bringing long term advantages to the patent owner.

What makes a patent valid?

The three major requirements for patentability are usefulness, newness and inventiveness. Put simply, patents will only be granted for something that is useful, and is new and inventive compared to what already exists. In Australia, a second class of patents known as "innovation patents" require a lower standard of inventiveness, and so can be suitable for protecting incremental developments in products which do not meet the standard of "inventiveness".

The requirement for the invention to be new is particularly important. This means that an inventor must not publicly disclose their invention before a patent application is filed, unless appropriate confidentiality arrangements are put in place beforehand. Consequently, negotiations with potential investors or business partners need to be handled appropriately. An inventor must also not use their invention publicly or sell the subject of the invention. Otherwise, their own use of their invention can prevent them from obtaining patent protection!

How long do patents last?

Standard patents have a maximum life of 20 years provided annual renewal fees are paid, meaning patents can considerably outlive the fashion cycle. Again, this reinforces the suitability for patents to protect the technology underlying clothing or footwear, rather than its physical appearance. Innovation patents have a shorter maximum life of 8 years, and so may be more appropriate for shorter-lived products.

What rights does a patent owner have?

Patents are exclusive rights – they allow the patent owner to exploit the patent and prevent others from doing so without the owner's permission. That exclusive right can be licensed to third parties or even sold, and so patents are an asset that can be used to create revenue streams for the patent owner and investment in their business.

Getting your patent strategy right

The first step in any patent strategy is to identify whether your products or processes are suitable for patent protection. Once this is identified, it is important to develop a patenting strategy from the outset so that your investment can be maximised. Patent applicants should consider what it is they wish to protect and how a patent can be used to benefit their business. If this is given proper consideration early on, the patent system can be used to create valuable business assets.