Close up with Brian Goldberg- IP Specialist EKM Patent & Trade Marks

 

 Brian Goldberg

Trade Mark Attorney

Tell us a little about yourself and what is your role at EKM Patent & Trade Marks?

We are a specialist intellectual property legal firm in South Yarra, Melbourne. I am a trade mark attorney and work with start-ups, exporters and basically all brand oriented companies to register and protect their brands.

Specifically I discuss the brand strategy, do the costs, under take trade mark searches, file and register new trade marks as well as enforce the rights of my clients’ brands against others who seem to copy. I also assist in filing and protecting the brands in international markets which assists exporters build international brands.

What are the five words that people who know you would use to describe you?
Honest, hard working, passionate, insightful.

Tell us about EKM Patent and what you can do to help artists, designers, and the creative community?
Being creative is a talent and takes internal drive to develop something new. That’s what I love about intellectual property, especially trade marks, is that it is all new and exciting.

What I can specifically do to assist artists, designers, and the creative community is initially EDUCATE them on intellectual property, their rights and the best way to ensure they have the opportunity to maximise their creations. I am always happy to educate, discuss and inform creative people. Then whether or not we proceed and file trade marks, patents and designs is secondary as long as the creative people are able to be in a position to make a choice and that is what I believe is an important start.

Regarding our actual services we file and register trade marks, patents and design registrations in Australia and internationally. We also provide the legal services required for creative businesses, such as licence agreements and necessary contracts. Enforcement and protection services are important and we do these in a cost effective manner to make sure your work is not copied.

What was the purpose on starting a new division"Business Services” at EKM and how has the concept come about?
Many of our clients are really talented and have always worked as a creative, however when it comes to the business side, they have no experience. We are very well connected in the commercialisation space and can easily assist people in taking their new ideas into viable business opportunities.

Therefore EKM business is a business support division that assists clients who have intellectual property with the business matters such as seeking funds, creating prototypes, marketing, sales and numerous other aspects. Our unique service is that we can be a VIRTUAL CEO for your company and provide the insightful and experienced business strategies for your company, without the often high costs of hiring a full time CEO.

What are the most common IP protection issues that relate to artists, designers, and the creative community?
Before protecting one’s creation, I always explore two key questions:

1. What aspect of the creation is seeking protection and what IP protection is available (trade mark, patent, design or copyright)?

2. Who owns the intellectual property?

Once this is discussed then a clear strategy is easy to develop.

These questions often lead to problems such as:

Copying – often people believe they can copy someone else’s work or copy some of it and just change a little. This is false.

Ownership - If you create work as a job, on most occasions the work company is likely to own your intellectual property. This may also apply to universities.

At what stage do you think artists, designers, and the creative community should think about protecting their IP?
Right from the start.

It is vital to review your creative work before it is shown to anyone as it is a requirement for a patent and design registration to be NEW. Therefore by showing, selling or publishing you may have lost your rights to protect it with IP.

Then whether you proceed with filing for IP protection is a commercial decision.

What should artists, designers, and the creative community look for when selecting an IP specialist?
These days in most industries each industry has its own unique niche issues and so we suggest to seek a specialist not only in IP but in your area of trade. So it makes sense to ask if the IP advisor has worked with your area such as artworks, fashion, furniture, etc.

From start to finish how long would it generally take to secure IP for a client?
Trade Mark – In Australia the process usually takes 7 months, however can be expedited if it is urgent.

Design registration – In Australia the design can be filed within a few days and subsequently certified in a few months.

Patent – a patent is initially filed as a provisional patent application and can take several years to proceed through to registration.

What advice can you offer to creative business who are just starting out and not sure about IP protection?
Learn, keep good records and become IP savvy.

Tell us about your process for working with your clients?

Initially, I am always happy to discuss the situation with people. I never charge for this initial discussion.
Then I will prepare a strategy and costs that will ensure all activities are clear and expectations are known.
And lastly, I like to treat all creations like they are my own and I advise accordingly.

Do you have a book that you would like to recommend?

I have just read David Shwarz book – All bets are off

Where do we find you and your services? (list office, links websites & contact personnel)

Brian GOLDBERG
PARTNER
Trade Marks Attorney
E
K
M patent & trade marks
www.ekmpatent.com
brian.goldberg@ekmpatent.com
Level 1, 38 - 40 Garden Street, South Yarra VIC 3141, Australia
T: +61 3 9829 0993 F: +61 3 9829 0998