Australia: Music And Patents Part 2: I Have A Musical Invention, Now What?

In  our last article, we discussed the myriad of ways in which musicians and performers are more inventive than you might have thought. If you think you've come up with a new invention (be it instrument, stagecraft or model train), you may want to consider patent protection. In this article, we discuss how and why.

So what rights does a patent provide?

Patents give you (as the owner) the exclusive right to 'exploit' your invention for a period of up to 20 years in the country or jurisdiction in which the rights are granted. What this means is that you have the right to make, sell, rent, and import your invention, or use your invented process to do these things, and/or licence others to do the same. The exact form this may take will depend on the nature of your invention. If you've invented a musical instrument, you might want to enter into licence agreements with manufacturers and shops to sell the new technology, but if you've come up with a trick dance shoe to perform a gravity defying move, you might want to prevent others from using it all together.

If another person infringes your invention in a jurisdiction where you have patent protection, you have the ability to enforce your patent rights and prevent them from continuing with their infringing conduct as well as potentially receiving monetary compensation for any damages you may have incurred.

Unlike designs, copyright, and trade marks, patents cover the functional aspects of your invention. This means that if another person changes the look of your invention but still uses the functional idea behind it, they may still be infringing your patent rights. The flip side of this is that fine arts (such as your music or the appearance of your custom guitar, for example) are generally not eligible for patent protection (though they may be eligible for copyright and/or design protection respectively).

How do I know if my invention is patentable?

There are a number of criteria which an invention must meet to be considered patentable. However, the key two criteria are that the invention must be novel and secondly, the invention must involve an inventive step.

To meet the novelty criteria, the invention must be new. What this means is that the invention has not been sold or publically used, or published in a document (including websites and advertising material) before the date the patent application is first filed, a date referred to as the 'priority date' of a patent application.

To meet the inventive step criteria, the invention must not be obvious. To determine this under Australian law, the patent examiner considers a hypothetical person skilled in the field of the invention, and asks whether they could come up with the invention without any difficulty knowing the 'common general knowledge' of the field.

I think I have a patentable invention, what should I do next?

If you think your invention is novel and involves an inventive step, the first thing to do is keep it confidential until you file a provisional patent application. The provisional patent application remains confidential, and lasts for a period of 12 months during which time you can refine the invention and talk to potential investors or partners without destroying your invention's novelty.

Within that 12 month period, you can file a complete Australian standard patent application based on your provisional application. A number of jurisdictions are subject to the Paris convention, allowing the priority date of the Australian application to be used if an application is made in that jurisdiction within 12 months of filing.

Alternatively, if patent protection is sought in a number of jurisdictions, it may make more sense to file a Patent Co-operation Treaty (PCT) application. This application consists of two stages, a first 'international' stage where the patentability of the invention is assessed, and a second 'national' stage where the applicant selects which jurisdictions they want to seek protection in.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.