Accelerate - March 2014

Of patents and partnerships

Elena Szentivanyi, a current council member of the NZ Institute of Patent Attorneys (NZIPA) sheds some light on the role of patent attorneys and how they can add value to business.

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What do patent attorneys do and what can they provide that people and businesses may be unaware of?

Patent attorneys are perceived by some as only being capable of filing patents, when in reality we offer a suite of services to our clients throughout the life of an invention or business. Many patent attorneys are also lawyers and can provide legal services related to the protection, enforcement and licensing of intellectual property (IP) rights.

We do a multitude of things. We will identify the IP in a business and explore options to protect it. We visit our clients to see what they are doing and how they are doing it, as well as engaging with our counterparts around the world to further our clients’ international interests. We also need to keep up with the latest developments and build external relationships with attorneys across the globe.

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Some business people may think they can handle their own intellectual property requirements. Are they right or wrong?

They are both right and wrong. There are definitely some steps business people can take to identify and protect their IP. I think that there is a balance to be struck between what the client does and what the IP professional does which suits the client’s budget and capabilities. However, in my experience it is often more difficult and costly to fix things that have gone wrong than to get some advice up front and take the appropriate steps at the right time.

There are many online databases a person can use to search for patents and trademarks; however, unless the user knows what they are doing, they may waste a lot of time for nothing.

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Where can a patent attorney add value to a business?

IP is a largely unidentified and often undervalued asset of many businesses. If you are in business, you are most probably creating or using IP – either your own or someone else’s. If you don’t know you own it, you can guarantee that it is not adequately protected and is undervalued.

We will assess what IP exists, see if it is or can be protected, and explain other methods of protection that do not require registration. We will also educate you to make sure you seek the right protection at the right time – protection of some IP rights is time-sensitive.

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What is an example of optimising someone’s intellectual property in a non-patenting way?

There are a number of famous examples of IP protection without patents. A couple of international brands have protected their secret recipes with trade secrets and some products are recognisable by the colour or shape of their packaging. What about a sound? A couple of classic Kiwi delivery services are instantly recognisable by the music the trucks play.

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Generally, how does the profession approach/charge for any initial ‘idea discussion’?

I find that there are many urban myths about IP (no, you can’t change something by 10% and say you own it!) so it is helpful to have an initial discussion with a patent attorney or IP professional to identify what, if any, IP rights exist and whether what you want to do is protectable or may infringe someone’s IP. I would expect most in the profession would happily have a 20-minute chat off the clock to assess whether there is any value that they can add to the client.

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How do I find a patent attorney?

Go to the NZIPA website, which lists firms where registered patent attorneys work. Also take a look at the listed firms’ websites – you are likely to be engaging in a long-term relationship with your patent attorney, so spend a bit of time considering the people available.

Elena Szentivanyi is a principal at Wellington-based patent attorney firm Henry Hughes, which is New Zealand’s oldest patent attorney firm, tracing its origins back to the original patent agent in New Zealand – Henry Hughes – who founded the firm in 1882.

Updated: 7 September 2015