When innovators have an idea for a new product, they will often use the expertise that you, as a product developer or designer, have, to make sure that a marketable product is developed, tested and designed. There is obviously a cost associated with that, so how can you help your clients to protect their investment?
How will your client protect the new product from being copied once it is launched into the market? This is often a last-minute thought. Or, worse, overlooked until someone else has copied the product. Without intellectual property rights, all the time, resource, expertise and money that goes into developing a product could be wasted, especially if a larger competitor floods the market with cheaper copies. And if little or no thought has been given to intellectual property until the last minute, or even when it is too late, you and the client may have missed out on valuable insights, advice and options. By introducing them to IP early in the product development process, you can help your clients to protect their investment, and there may be some IP insights that arise along the way that could even help to guide the product development process.
Where there is a USP, there is (almost) always IP…
…but only if it’s properly captured and protected. When a client comes to you with an idea for a new product, the development/design process often starts with concepts and proposals to try and capture the client’s vision and guide the development process. But have they given any thought to who/what their nearest competition may be? What their USP will be? Or How they’re going to stop others from copying their new product once it has been launched? At that stage, it might seem like ‘early days’ for those types of questions, but without giving some thought to them, there is a great risk that their investment in the development process will be undermined and lost. Introducing your clients to an IP attorney right from the start, and keeping the IP attorney updated as the development process progresses, can mitigate this risk.
Ther are a number of things that an IP attorney might want to consider, depending on the product, the stage at which the development process is at, the client’s budget and their commercial plans for the product.
Patent Searching
Patent searching during the early stages of product development can be hugely insightful, not just for your client and their IP attorney, but also for you. First, it gives us an insight into just how unique the idea is and, in turn, what aspects might be protectable further down the line. Second, it gives you, the designer, an insight into how others have solved similar problems in the relevant field. Third, it may yield potential infringement risks – the last thing you want to do is develop a product which, when it is launched, is found to infringe someone else’s IP rights. It can also give the client an insight into who their main competitors might be.
Patent searching may not be right for all clients, and sometimes the timing of any patent searching may be a factor to consider, but it’s worth thinking about from the outset, and sometimes at various stages of the product development process.
Patents or Registered Designs?
Is the product technically new in some way? Is it aesthetically better in some way than its nearest competitors? Could the client benefit from the Patent Box tax concessions? The answers to these questions will determine whether a patent, a registered design, or both would be the best way to protect the product. It is wise to get an idea of how the product will be protected early on in the development process, and keep your client’s chosen IP attorney abreast of developments along the way. That way, they can advise on how to protect your client’s investment, and the best time to apply for a patent or design registration.
Trade Mark Searching
Often, when a client has come up with something new, one of the first things they may have done is to come up with a name for it. But are they free to use that name? It is not unusual for a new product to be launched and on the market before it emerges that the use of the chosen name infringes someone else’s trade mark rights. When that happens, and if it is justified, there could be significant legal costs for the client to deal with, and the product would ultimately have to be recalled, rebranded and repackaged, often at enormous additional cost. The risk of this can be mitigated by having a trade mark search before the client commits to the name (whether in the form of a domain name, on a website, in marketing resources or on packaging).
Timing
The timing of applications for registered IP can be critical to the success of a new product. A UK patent application must be filed before there is any non-confidential disclosure of the invention. So, for example, if your client plans to use a crowdfunding platform to fund ongoing product development, then a patent application (if appropriate) would have to be filed before the funding campaign goes live. In some countries, a design application also has to be filed before there is any non-confidential disclosure of it. For that reason, it is often advisable (if appropriate) to file a UK design application before such a crowd funding campaign goes live.
If it is possible to keep the invention confidential during the development process, for example, by using NDAs with selected individuals and organisations, as needed, then it may be better to wait a while, and file applications for registered IP a little further on in the development process.
Start Early
By involving an IP attorney early in the product development process, and keeping them updated as you go along, means that the client gets early advice on the right IP strategy for them and can help them, not only understand their options, but also help them manage their cashflow and expectations. Ultimately, you can help them to protect their investment in your services and offer a more comprehensive concept-to-market approach.
Need Help?
Are you a product developer or designer with clients that may need early IP advice? Or do you have any other IP questions? If so, please book a free initial consultation by using our Calendly link below:
https://calendly.com/strachan-ip-a-fresh-view-of-intellectual-property/30min
Or by emailing vicki.strachan@strachanip.co.uk or calling +44 (0)7714 797135
or visit our website: https://strachanip.co.uk/contact/
