Out on a Limb
Intellectual property issues
The following questions were put to prosthetics developer Wayne Alexander 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.
- You use the term 'grafts' for early/rough prototypes – did you consider how their intellectual property might be protected?
- Did you protect the name DASHfoot?
- Did you protect each of your working prototypes?
Wayne believes there are pros and cons in claiming intellectual property rights in a prototype. The cost of registering an intellectual property (IP) right such as a patent or registered design at the Intellectual Property Office of New Zealand (www.iponz.govt.nz) is an overhead that might be difficult for a new business to afford.
On the other hand, registration provides evidence of ownership of the IP in the prototype.
Until the prototype is developed, and until he is confident that it is worth protecting, Mr Alexander relies upon secrecy, sometimes using confidentiality agreements to protect his ideas.
The word DASH® is a registered trade mark. It was arrived at from an acronym for the words that describe the invented prosthetic foot (Dextrous Ankle Solid Heel).
It is not usually possible to obtain a registration for a trade mark that actually describes a product because this would prevent other traders in similar products from using appropriate words to describe their own product. For instance you could not obtain a registration for the word 'sweet' in relation to chocolate. However the choice of an acronym for the DASH® trade mark is acceptable – it will not for instance prevent another trader from using the word 'ankle'.
Wayne Alexander used a strategy of time management in relation to the patent application for the prototype. He reasoned that the longer he was able to draw out the process, the more opportunity he would have for clarifying and focussing his ideas (while still maintaining some intellectual property protection) before arriving at the ultimate final product.
The first step was to file a provisional application for a patent on the prototype with IPONZ. This application provided the prototype with a priority date – evidence of ownership of an invention which helps prevent it being patented by anyone else. In addition, a provisional application number was allocated to the prototype and could be used with the words 'patent pending' whenever the prototype was displayed in public, for example when it was tested in the marketplace.
After a maximum time of 15 months the inventor is required by IPONZ to file a complete specification and apply for a full patent. Mr Alexander chose to file a complete specification for just one aspect of his invention at a time. This strategy allowed him to refine his invention over a number of years.
The approach could be seen as a modern 'take' on the Brunelleschi story mentioned in the case study.
