IP protection launches meteoric rise of Australian tech startup Bluedot Innovation

/ Madderns / Articles

Insights from Bluedot Innovation’s Filip Eldic, and Madderns Electronics and ICT specialist Bill McFarlane.

Research and Development firm Bluedot Innovation delivers precise and easy to use location services technology to the world’s most exciting companies.

Emil Davityan (L) and Filip Eldic (R) of Bluedot Innovation

Emil Davityan (L) and Filip Eldic (R) of Bluedot Innovation

 

Madderns has worked with Bluedot throughout their rapid and meteoric rise, from a two-man tech startup in early 2013 to a successful software business now running offices in Melbourne, Australia and San Francisco, USA.

“Our Bluedot Point Software Develop Kit product enables mobile apps to trigger any action — like opening websites, sending messages and playing video — when users walk or drive through precise locations set anywhere in the world,” says Filip Eldic, Bluedot Co-Founder and Executive Director.

“Amongst many recent examples, the largest client contract we’ve signed to date is an AU$24 million, 14 market deal.”

But in the early days, all Filip and co-founder Emil Davityan had was an idea, drawn as a flow chart on paper. That was enough to get started on protecting their intellectual property (IP).

“Even before we had built the technology, I had a conversation with Bill McFarlane at Madderns to confirm it was protectable. We’ve worked together ever since,” Filip explains.

 

“Protecting our IP right from the beginning has been instrumental in allowing us to develop our products and to raise capital at strong valuations.”

 

Bluedot is now in the position to tap into a global location services market that is expected to grow to US$39 billion by 2019.

Protecting IP key to success

Bluedot co-founders Filip Eldic and Emil Davityan prioritised protection of their IP as a core component of their commercial strategy.

“Right from the outset, we decided to consciously invest in protecting our IP,” explains Filip.

This has paid dividends not just in ensuring peace of mind to limit copycat activity, but also from a growth perspective.

“When originally raising investment, we had no physical product so we needed to provide solidity and assurance for investors,” says Filip.

“Having a patent already filed at such an early stage gave us a significant ability to raise money at a good evaluation.”

Bluedot has attracted approximately AU$4 million in funding since the very early days of their operations, and are now working with top tier investors in Australia and the US to raise a substantial round for the next stage of the company’s growth.

“If we didn’t generate quality IP, underpinned through a comprehensive IP strategy, these capital raises would have taken place at much lower evaluations and we wouldn’t be able to provide clear assurances to clients around ownership and access to IP,” Filip says.

Working in partnership with Madderns

Bluedot co-founder Filip Eldic explains that Madderns have been a crucial part of their success.

“When we first met with Bill McFarlane, he realised we had a unique and valuable idea that could transform mobile location services,” says Filip.

“Since then, Madderns have been an incredibly good partner for us.”

He says Madderns have been strategic and flexible, and worked with Bluedot to manage budgets as their startup was growing and cost-conscious.

“Without that flexibility we wouldn’t have been able to work in this space,” explains Filip.

 

“No other firm came close to Madderns in terms of expertise, approach, and flexibility.”

 

Expert guidance for patenting technical innovation

Part of both the Electronics and ICT teams at Madderns, Bill McFarlane worked with Bluedot to develop, file and progress patent applications to ensure IP protection in selected countries across the world.

Bluedot owns patent applications that protect the highly unique and commercially valuable aspects of their software capability. This includes the application of geofences to trigger actions, and reduced phone battery drainage associated with use of the mobile device as it pinpoints locations anywhere in the world.

Bill explains the steps in protecting technological inventions through patenting.

“In Australia, the first step in the process is to file a provisional patent application, a figurative flag in the sand that places a ‘first to file’ date on the intellectual property,” says Bill.

The provisional application does not provide any rights to enforcement, and is effective for 12 months. The client can use that time to file further provisional applications as the idea develops, and importantly to decide whether to file complete patent applications in Australia or another country.

The filing of a complete application can be achieved through filing an International (PCT) application.

“The PCT application acts like a global reservation system,” Bill explains.

 

“You file a single complete application, and that delivers you the right to file in 148 countries around the world.”

 

The 148 countries are signatories to the Patent Cooperation Treaty, and include Australia, China, Japan, Indonesia, India, USA, Canada, much of Europe, some South American countries, parts of Africa and several Arab States. The PCT application is administered by the World Intellectual Property Organization.

Filing a PCT application provides the applicant with another 18 months of protection, during which time they can assess individual markets and decide which countries in which to submit the patent applications.

“Once you’ve reached this point and made your assessment of the patent coverage that best suits your commercial strategies, you enter the national phase of the PCT application system. Bluedot are currently at this point, selecting chosen countries with two of their patent applications,” says Bill.

Bill also provides Bluedot with strategic trademarks advice and filing services, another important aspect of IP protection for tech startups.

Bill McFarlane and his colleagues in the Electronics and ICT teams at Madderns have also worked with many other companies for IP protection related to technical inventions and products, including:

Contact Bill at Bill.McFarlane@madderns.com.au

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Assessing the IP Landscape

/ Madderns / News

Bill McFarlane and Chris Wilkinson recently presented at a TIA Event – New Technologies: assessing the IP landscape and applying nanotechnology hosted by Madderns on 28 October 2015.

Bill and Chris  discussed the basics of patent searching, how to read a patent specification to assess patentability and freedom to operate, and the exemptions to infringement that exist for performing experimental (ie R&D) activities. A copy of their presentation is available here.

David Lewis who is the Director of Flinders University’s Centre for Nanoscale Science and Technology also talked about the NanoConnect program that brings the Centre’s skills in nanotechnologies and advanced materials science to local SME’s, enabling them to understand the benefits of nanotechnology and providing a low-risk way to explore new practical applications of these technologies.

TIA Flinders

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Registering Business “Nicknames” as Trade Marks (the case of Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd)

/ Elise Bruce / Articles

The case of Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd

When online retail sales company Catchoftheday.com.au Pty Ltd applied to register two logos incorporating TAR JAY as trade marks in 2013 (depicted below), Target opposed registration. Target claimed that use of the logos would be likely to deceive or confuse customers, arguing that it had a reputation in the name ‘Tarjay’ (or ‘Targét’) because Australian consumers have long recognised this as an endearing alternative name for Target stores. Several examples of third parties using this name in printed media and online were cited in evidence.

 

tarjay2

The Delegate of the Registrar of Trade Marks assessing the opposition found that ‘Tarjay’ (or ‘Targét’) is ‘strongly associated in the mind of the public with [Target]’ and that ‘the evidence strongly supports such a conclusion and, indeed, suggests that the expression has entered language’. Significantly, the Delegate considered that prior use of a trade mark was not determinative in assessing reputation in a trade mark. In this case, Target had not used ‘Tarjay’ as a trade mark, however, this nickname was associated with Target through use by third parties.

The Delegate concluded that use of the TAR JAY logos by Catchoftheday would be misleading or deceptive and the applications were refused. In reaching this conclusion, the Delegate rejected Catchoftheday’s proposition that customers would view the logos simply as parody or satire. Instead, according to the Delegate, a customer who sees the logos while shopping on Catchoftheday’s website ‘will be misled into believing that it is either shopping on [Target’s] website, or on a website operating under the auspices of [Target], or with its sanction or license, or that there is a link between [Catchoftheday] and [Target].’ Target has also now filed an application to register TAR-JEY as a trade mark.

Nicknames associated with a business/product can be valuable marketing assets. Consequently, if a nickname becomes associated with a particular business or product, it may be worth considering filing applications to register the nickname as a trade mark, in addition to registering your traditional brand names.

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Madderns Again Recognised in MIP IP Stars Handbook

/ Madderns / News

Madderns has again been recognised in the Managing Intellectual Property IP Stars Handbook for 2015.

Madderns is the largest IP firm in South Australia and widely recognised as one of the top mid-sized firms.

Patents

Senior Partner, Craig Vinall, along with Partners Martin Pannall, Mark O’Donnell and Anthony Lee have been recognised as patent IP Stars, particularly in the areas of patent prosecution, patent litigation, patent strategy & counselling and patent opinion. Mark O’Donnell has again picked up a coveted ✓✓✓ (3 tick) ranking for patent prosecution; the only individual to receive this nationally.

Trade Marks

Partner and head of trade marks Louise Emmett, has again been recognised as an IP Star, and has received a ✓✓ (2 tick) ranking for both trade mark prosecution and trade mark strategy. Of the 36 IP Stars ranked for trade mark prosecution, Louise was one of only six who achieved a rating of two or more ticks. For trade mark strategy, Louise was one of just three individuals to receive such a rating out of the 47 IP Stars named under that category.

In addition, partners Martin Pannall and Anthony Lee have also been named as IP Stars for trade mark prosecution.

Madderns has a respected team of trade mark attorneys who not only file applications but also advise on oppositions and cancellation proceedings.

One client of the firm praises its “excellent trade mark attorneys and lawyers who provide good sound practical advice”

IP Stars are named after a comprehensive process involving electronic surveys and face-to-face interviews, taking in feedback from peers and users of the intellectual property system. Managing Intellectual Property is a leading source of news and analysis on all intellectual property developments worldwide.

We congratulate our IP Stars for the recognition they have received and acknowledge their consistency, having all been also identified as IP Stars in 2014, as well as being the only IP Stars recognised in South Australia.

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