RML Automation
Intellectual property issues
The following questions were put to RML Director, Peter Botting in late 2007 by Susan Corbett, of Victoria University of Wellington, as part of her study, Intellectual property in Technology teaching, identifying intellectual property implications and issues that emerge from selected Techlink case studies. Their replies take the form of edited reported speech.
- What does RML stand for? Is it a registered trade mark?
- The term 'tacit knowledge' is used in the case study to refer to "knowledge that has been gained over time and is exclusive to the firm”.
Could this be compared with the code that a software developer considers to be part of his or her own library? It might be used for new projects but the ownership of the IP in the pre-existing knowledge (or library code) is claimed by RML Automation (or the software developer) to be used within any of its projects. - Drawings for the machine during the development process. Does RML Automation ensure it retains a copyright trail?
- The policy regarding patent protection is interesting. If RML had decided to apply for a patent, at what stage would you have done so? Would ownership of the patent generally be joint (shared) with the party which has commissioned you – in the case of Nestlé it appears they had some additional input into the final product as well.
As far as Peter Botting is aware, there is no particular meaning associated with the name RML. He is not sure why the name was originally chosen. However he is often asked about this and generally tells inquirers that the name stands for Reliability Manufactured Locally.
The name has not been registered as a trade mark . This kind of intellectual property (IP) protection is not considered to be particularly relevant to the kind of business that RML Automation operates. RML Automation specialises in developing specific machinery for packaging for the food industry. Usually the machinery is created on an individual basis for a particular food manufacturer, such as the s540 Collator for Nestlé in the case study. Marketing using a trade mark or brand is therefore not a big part of RML Automation's business strategy, which is more reliant upon developing relationships of trust and a reputation for quality and good service with food manufacturers.
However, Peter Botting explains, the RML logo is regularly used on their letters, website, and products in order to identify the company to other potential customers. The company is therefore establishing a reputation in this brand and could apply to the Intellectual Property Office (IPONZ) to register the logo as a trade mark.
This is correct. The term tacit knowledge, as used by RML Automation, also includes 'human intellectual capital'; that is, the knowledge that is in its employees' heads.
Thus, a client who engages RML Automation to design a specific item of machinery will often ask RML Automation to sign its IP rights in the machine over to the client as a condition of getting the job. However, RML Automation will only agree to make the machine if the client agrees that RML Automation will retain all IP rights in any of its own tacit knowledge that is used in designing the machine. The client also has to agree that this tacit knowledge can be re-used by RML Automation to design other machinery (even, potentially, for a competitor of the client).
Is it usual for clients, such as Nestlé, to require RML Automation to enter into a confidentiality agreement before describing their specific requirements for a new project?
In this particular case study a confidentiality agreement
was not required. Often, however, the client will require RML Automation to enter into a confidentiality agreement before it discusses its requirements. This is particularly important where there is a competitive situation in the marketplace and the client's discussions with RML Automation will inevitably reveal its competitive strategies.
An individual inventor who wishes to discuss his or her ideas with RML Automation will almost always take the precaution of asking for a confidentiality agreement to be signed.
RML Automation has not consciously thought about keeping a copyright trail on its original designs and plans for new machinery. Designs and plans are, of course, automatically protected by copyright as 'artistic works' for the lifetime of the author and a further 50 years. The company does, however, keep dated archives of these items; these would be useful in any dispute, as evidence that an RML Automation employee was the original author and that the copyright belongs to RML Automation as the employer. They also provide evidence of the term of copyright protection.
RML Automation does not generally apply for patent protection in situations where it has developed a "one-off” machine to fill a specific need for a client, such as the s540 Collator for Nestlé. This is because the cost of applying for a patent and also, possibly, defending it in court if anyone infringes the patent can be very high.
An application for a patent can be made by any person (or persons) claiming to be the inventor. Where there might be several parties claiming input into an invention the legal provisions are complex. It is always best to have a legal agreement (a contract) drawn up from the outset which sets out how the rights to commercialise the patent will be shared.
A legal agreement from the outset would also be effective if the parties have initially agreed to rely only upon confidentiality agreements but later decide that the invention might have commercial potential.
Of course, it might not be possible to patent some of RML Automation's new inventions, as by the time the company realises their commercial potential they might have already placed it in the marketplace and thus removed the 'novelty' to the New Zealand market which is required for patenting.
