CellSense™ – A World's First
Intellectual property issues
The following questions were put to CellSense™ CEO Rod Claycomb 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.
- The product is described as CellSense™ on the first page of the case study – is this because, at that time, your brand was not a registered trade mark?
- How did you protect the development of the 'quarter conductivity system' with Fusion Electronics.
- Did you encounter any particular problems when you applied for a patent on 'a gelling technique for measuring somatic cell count'?
- Did you require the participants in your stakeholder consultation groups to sign confidentiality agreements?
- In summary, what IP protection does your final product have?
- Do you have patent protection for the product in all overseas countries in which you license its production?
Rod Claycomb explains that the product's name is also its brand. However the brand had not at that time been registered as a trade mark. In the meantime, the company wished to warn other companies that it was claiming prior use of the word CellSense as a brand and an unregistered trade mark for its product. This is done by placing the symbol ™ as a superscript next to the brand name or logo.
There are some legal protections available for an unregistered trade mark under consumer laws, but it is not always certain that this will be successful in court. An action under the Trade Marks Act 2002 for infringement of a registered trade mark is more likely to be successful.
Now that CellSense has been registered as a trade mark at the Intellectual Property Office (IPONZ), the correct way to write the name is as follows: CellSense®. Note that it is an offence to use the symbol ® in connection with a word or logo that is not in fact a registered trade mark.
This was protected by trade secrecy, meaning that no patents were filed to protect the intellectual property (IP). Rather, the information important to the design was retained as in – house knowledge. In addition, certain features of the design, including software codes, electronics layout and mechanical designs are copyright provided they are original. Use of the product technology has been licensed to Fullwood Ltd (UK).
There were no real problems experienced when filing this patent application in New Zealand. Rod Claycomb explains that the issues, if any, usually arise when the patent application with full specification has been accepted by IPONZ. Following acceptance, the complete specification for the invention is published by IPONZ in the IPONZ journal and on its website (www.iponz.govt.nz).
This step is preliminary to the final grant of a patent. There are three months following the publication of the full specification for another person or company to object to a patent being granted. They might object because they claim an invention is not novel, or perhaps they might claim that an invention infringes their own registered patent.
When Sensortec applied to register the patent in the United States, there were some problems. The United States Patent Office claimed that the invention infringed some 'prior art' (a term used to describe matters already protected by another registered patent or already published somewhere in public). Sensortec had to modify its own application and re-apply. This proved to be a time-consuming process. The registered US patent was only granted earlier this year (2007).
Rod Claycomb explains that there was no need to take this precaution because by that stage the product was protected by a patent.
Although certain parts of the design process remain protected as a trade secret (since it is unlikely they would satisfy the novelty requirement for a patent), these particular parts were not discussed in the stakeholder consultation groups.
The product is protected by a combination of patents, trade secrets and the registered trade mark (CellSense®). Sensortec has also registered another trade mark (CellGel®) for the reagent used by the sensor.
Sensortec would prefer to license the product only to partners in countries where patent protection has been granted. However in some countries, notably Japan, the cost of a patent is extremely expensive.
In that situation, sometimes companies will take the risk that their product might be copied. They work hard to build up a good reputation for the quality and service features of their brand, often also protecting it as a registered trade mark. This often means that customers will not be tempted away by other competitors making a similar product.
