The product development cycle (illustrated below) can be frustrating, especially if you are starting or scaling up a business. It can often take longer, and cost more, than expected, so the importance of realistic business plans and budgeting cannot be stressed enough.
I am often asked: ‘When is the best time during the product development process to think about and secure intellectual property?’
The answer is that there is no ‘best’ time or ‘one size fits all’ rule; every case is different and requires a unique strategy. Ideally though, intellectual property (IP) would at least be reviewed at every stage of the cycle, to recognise its full value and that your product is adequately protected upon launch.
It is commonly recognised by the business community that a patent can protect a novel technical concept, and that an invention should be kept confidential unless/until a patent application has been filed. What is less clear is when the best time to file this application is. While it is tempting to do so at the concept stage, which may be the right strategy if you need to disclose the invention publicly in order to raise funding, there are some drawbacks.
The invention is likely to evolve over the subsequent stages, so it is important to check along the way that the patent application still covers the invention in its current form and consider ‘topping up’ the application to include new features/ technical subject matter within 12 months of filing the application. This deadline applies if the original filing date is to be retained, and if filing corresponding overseas applications.
A registered design (RD) is another type of registered IP, which protects the appearance of a product. Only the product’s appearance is protected, so it’s often best to wait to file an application until it’s ready to be launched. In the UK, US and European community, the law even provides for a socalled ‘grace period’ of 12 months, meaning that you can, in theory, file applications for RDs in those territories up to one year after you have publicly disclosed the product. However, this can be risky, not just because a third party could register something very similar in the intervening period, but also because few other territories offer this allowance, so if your product was disclosed to the public before the effective filing date of your RD in, say, China, the Chinese right would be invalid.
Trade mark (TM) registration also needs to be considered. You may wish to protect your mark in every country that you plan to sell into, but your budget and cash flow must allow for this. Unlike the other registered rights, your TM doesn’t have to be kept confidential until after you have filed a registration application, so an alternative might be to first file in your home markets ahead of the product launch, then file applications for registration in other territories as the market grows, spreading the cost over a longer period of time. It is however important to ensure that you are free to use your chosen TM in the countries to which you are selling (i.e. your use of the TM will not infringe someone else’s rights) and ideally before committing to branded materials.
The message is clear:
Get advice early in the product development cycle from a patent or trade mark attorney, and continue to review your IP strategy as the cycle progresses in order to optimise the potential value of your IP and, ultimately, your business. At Mathys & Suire, our attorneys can offer a free initial consultation to form a rough strategy of timings and budget for your product development.
For help with product development IP contact: Vicki Strachan Patent Attorney & head of Mathys & Squire’s Oxford office firstname.lastname@example.org www.mathys-squire.com
Milton Park Innovation Centre 174 Brook Drive, Milton Park, Oxfordshire OX14 4SE T: 01865 546 155