But first, let me take a selfie…No, check your patent first

Malcolm McBratney, Stephanie Parkin

Taking a selfie has never been so simple – thanks to the selfie stick.  With an estimated 100,000 sold worldwide during Christmas, the selfie stick has become a household essential and earned itself a spot on the Time’s 25 Best Inventions of 2014.  In reality, the alleged original inventor of this newfound gadget launched the product in 2006 after years of investment and prototypes and long before the selfie was recognised as a word or became a phenomenon.

 A Canadian named Wayne Fromm was the inventor of Quik Pod – a selfie stick that relies on the camera’s self-timer.  In 2005 Fromm filed patents in the USA and Canada only for a device he called the ‘Quik Pod’, ahead of the explosion of the iPhone, Twitter or Instagram.  

After selling the Quik Pod in Beijing during the 2008 Olympics, Fromm soon witnessed the mass manufacture and distribution of counterfeit versions of the Quik Pod, which generally included built-in Bluetooth or Bluetooth remote control as distinguishing features.  These alternatives are functionally distinctive from Fromm’s Quik Pod self-timer which may not technically infringe the patent.

Indeed, the geographic limitation of Fromm’s patent also means that he has no right against manufacturers located beyond the USA and Canadian borders.  It is not surprising that Fromm is frustrated by the multitude of knockoffs that are flooding the market.

Lessons
Enforcing intellectual property rights and commencing proceedings can be a challenging task in foreign countries.  If you demonstrate, sell or discuss your invention in public before filing for a patent, you often cannot obtain patent protection.

This serves as a timely reminder to review your intellectual property portfolios and ensure that each of your intellectual property registrations are in use, valid and enforceable in those countries where the intellectual property is used.  Various international treaties can assist in protecting your invention or brand overseas, and you should consider applying for these protections overseas sooner rather than later.

Malcolm McBratney

Stephanie Parkin