Businesses are embracing social media in droves. It’s free, it lets you promote the name of your brand and business, it lets you tell customers about your goods and services, find out what customers think of your business, attract new customers and build a stronger relationship with existing customers. However, as a patent attorney, I have seen a steady increase in clients who limit or even lose any IP rights they may have had by posting information about their new goods and/or services on social media before ensuring adequate IP protection is in place.
It is easy to understand the attraction of social media to businesses, particularly Facebook to start-up businesses. It enables a start-up business to tell their story so to speak in a series of posts. It enables the start-up business to interact directly with followers (hopefully future customers). Furthermore, it builds a sense of family around the start-up business and their followers and enables the business to gain traction as friends of followers are directed to the business’ Facebook page.
Nevertheless, social media has exactly the same IP legal issues as traditional media. Where a business would seek clearance advice before releasing a television, radio or printed advertisement to ensure various IP laws are not contravened, the same business will not spare a thought to posting on their Facebook page despite the ramifications being the same.
Issues of copyright and trade mark infringement, defamation, breach of Australian Consumer Law and passing off aside, my personal experience concerning the perils of IP protection and social media relate to patent and design protection.
Generally speaking, patent or design protection should be sought prior to any public or commercial disclosure of a new product or service. In many countries, such prior public or commercial disclosure, before the filing of a patent or design application, will invalidate any subsequently filed application.
For example, Client A developed a new product. They were excited about their product and posted photos of their product on their Facebook page from day one. Their product was successful and drew the attention of various media outlets.
Eventually they sought IP protection for their product. When asked about their product, they referred to their Facebook page where we found that over 24 months had elapsed since their first post disclosing their invention. Furthermore, all the details of their product, including its design and development, had been entirely publicly disclosed for over 18 months. Regrettably for Client A, in view of the time that had elapsed, it was no longer possible to seek valid patent or design protection for their product.
We can take another example with Client B who has a similar initial story as Client A. They also developed a new successful product and posted photos of their product on their Facebook page from day one. Their product also garnered the attention of various media outlets who published television reports about their product.
Eventually, we were contacted about 10 months after their initial public disclosure on their Facebook page. Fortunately for them, however, all was not lost. Australia provides a 12-month grace period against the prior public or commercial disclosure of a product or service for which patent protection is sought. As such, we were able to prepare and file a patent application covering their product. Importantly, however, no such grace period is provided against a public or commercial disclosure of a product requiring design protection.
Despite the above, it was not all smooth sailing for Client B. They were interested in obtaining patent protection for their product in Europe, which unfortunately was no longer possible in view of their prior public disclosure and the fact that most European countries do not provide a grace period against such disclosures.
The take home message for businesses and social media from a patent attorney’s perspective is to treat any new product or service secret until appropriate IP protection is in place. While Australia does provide a 12-month grace period for patent protection, reliance on the grace period is not desirable and the rights granted by the issuance of any subsequent patent may be limited.