I am often asked, when, during the product development cycle, is the best time to put IP in place, and the answer is, there is no “best” time or ‘one size fits all’ solution: every case is different and need a unique strategy. That is why your IP strategy should be reviewed (at least) at every stage of the process, to make sure that everything gets done at the right time, ready for when your product launches. Here, we discuss some of the factors that help to fit your IP strategy around your product development cycle.
The product development process will be all too familiar to you if you are starting or scaling up a business. it often takes longer, and costs more, than expected; and it is the intellectual property (IP) you put in place that will help to protect that investment when the product launches. But timing is key.
You may be familiar with patents, which protect technical innovation, and if so, you probably know that you must not tell anyone about your invention (except in confidence under NDA) unless and until a patent application has been filed. What is less clear is when the best time to file the application actually is. It is, of course, very tempting to do so at the early concept stages, and this might be the right strategy if you need to publicly disclose the invention in order, for example, to raise funding (e.g. via a crowdfunding campaign or online pre-orders). However, there are drawbacks to filing early.
The invention is likely to evolve during the later stages, so it is important to check along the way that the patent application still properly covers the invention and, if not, it may need to be “topped up” to include the new or changed features. Not only does this add to the cost, but it can only be done during the first 12 months after filing the original patent application if you want to ‘keep’ your original filing date, and that same 12-month deadline also applies to filing any corresponding overseas patent applications. So filing early starts a 12-month “clock” running that can add pressure to the product development process, and force you into making decisions (and incurring costs) in relation to overseas patent applications whilst you may still be a long way from launching the product.
A registered design is another type of registered IP, which protects the appearance of a product. Only the products appearance is protected (rather than any underlying concept), so it is often best to wait to file applications for design registration until it’s just about ready to be launched. In the UK, USA and EU, the law provides for a so-called ‘grace period’ of 12 months, which means that you can, in theory, file applications for registered designs in those territories up to 12 months after you have publicly disclosed the product. This can allow you to test the market before incurring the cost of this type of IP protection. However, it can be risky, not just because a third party could register a similar design in the intervening period, but also because few other territories offer this grace period, so if your product was disclosed to the product before the effective filing date of your registered design in, say, China, the Chinese right would be invalid.
Trade Mark registration also needs to be considered. You may wish to protect your brand name or logo, from the outset, in every country that you plan to sell into, but your budget and cash flow may not necessarily allow for this. Unlike the other registered rights, your trade mark does not need to be kept confidential until after you have filed an application for registration. So, one strategy might be to first file applications in your home markets ahead of the product’s launch, and then file applications for registration in other territories as your market grows, thereby spreading the cost over a longer period of time. It is, however, important to ensure that you are free to use your trade mark in the countries into which you’re selling (i.e. to make sure your use of the trade mark won’t infringe someone else’s earlier rights) and that should ideally be done before committing to branded materials, so even if you plan to delay filing an application for trade mark registration in any given territory, it is wise to ensure that you are free to use the trade mark in all of your chosen territories before committing to the cost of branded packaging and marketing materials.
Need Help?
Here at Strachan IP, we can offer a free initial consultation to form a rough strategy of timings and budget for your product development, and ongoing consultation/support as the product development process progresses. If you need any help with this, or any other IP matter, please do book a free initial consultation by emailing vicki.strachan@strachanip.co.uk or visiting our website at https://strachanip.co.uk/contact/
