Intellectual Property should ideally be reviewed at every stage of the product development cycle, not just to ensure that your product is protected at the time that it is launched, to ensure at every step along the way that the full power, potential and value of the associated IP can be recognised and leveraged. Many innovative companies know that patents protect novel technical concepts and that they need to keep an invention confidential before filing a patent application. What is less clear cut is, when is the right time during the product development process to file a patent application? Read on to find out more…
The product development cycle can be a long one, going through various stages (in some cases, several times) and the journey from concept to market can be frustrating, especially if you are starting a business or planning to scale up your business using improved or additional product lines. It is tempting to file a patent application as early as the concept stage, to ensure that you have “planted your flag”, but this is not always the right strategy, because it also starts a “clock” ticking toward the dates at which next steps need to be taken.
If you need to disclose your innovation and cannot do so under confidentiality conditions, for example, for a widespread market research exercise or to raise funding, then of course a patent application needs to be filed beforehand. Indeed, some potential investors may insist on it.
However, you only have 12 months (the Convention or ‘priority’ period) from the date of filing a UK patent application to a) “top it up” with any additional material arising from the intervening period of development and re-file the UK patent application, and b) file any corresponding overseas applications (or an International patent application), whilst retaining the original UK filing date (or ‘priority’ date). Given, that the product development process often takes longer (and costs more) than expected, if you have filed your UK patent application too soon, you could end up in a situation where you are not ‘ready’, or do not have the necessary funds, to properly deal with these matters. So, if it is feasible, it is often better to wait until the product development process is nearer completion before embarking on the patent application process.
Nevertheless, and irrespective of when the initial UK patent application is filed, the innovation is likely to evolve as it progresses through the various stages of the product development cycle. In fact, the development process often means that your idea might change considerably from the point of concept and the time it goes into production. These changes to the design are usually vital to make the product manufacturable, viable and marketable, and it is essential to keep reviewing your IP strategy as those changes are made. If you have already filed a patent application, does it still adequately cover the evolved product design? Or does the application need to be “topped up” or changed to better ‘fit’ the innovation as it looks now? If you have not filed a patent application, is it time to do so? This might be useful, even if you are not yet at the launch stage, because the Patent Office search, which is issued around 3-6 months after a UK patent application is filed, may be a useful tool to guide your design process as well as to assess what scope of protection you might be able to secure for the product and to guide your decisions in relation to overseas IP protection before the end of the 12-month ‘priority’ period.
Of course, the timing for other IP rights also needs careful management. Registered designs, for example, protect the outward appearance of your product, so it is often advisable to wait to file an application for design registration until the product is in its final form, i.e. the way it will look when it is launched. Some territories, including the UK, EU and USA, offer a 12 month ‘grace period’, which means that you can even still file a valid application for design registration within the first 12 months after the product has been launched. Whilst this might seem attractive from a cashflow perspective, it is risky because someone else could register a similar design in the intervening period, which would take precedence and could invalidate your own registered design. Also, many other territories do not offer this grace period, so by using this facility, you could be shutting off your ability to secure protection in other countries, such as, for example, China. Once again, the options available need to be reviewed and assessed at each stage of the product development cycle to ensure that your IP strategy evolves with the product as it is developed and matches both your commercial aspirations and your budget.
The timing for filing applications for trade mark registration can be a little more straightforward in many cases, because trade marks may not come to the forefront of the review process until the branding and packaging stages and you do not have to keep them confidential before filing an application for registration. However, that is not always the case, particularly if use is going to be made of your branding before the product is launched (for example, advance sales). Another consideration is whether or not you are free to use your chosen trade mark in your commercial markets. Have you left enough time before the packaging is finalised and manufactured to have some freedom to operate searches done to make sure you won’t infringe someone else’s trade mark rights in the countries in which you plan to sell the product? Before the packaging has been made and the documentation branded up, it may not be a hugely costly exercise to re-brand, whereas having to re-brand afterwards can be very expensive.
These are just some of the issues that can and should be considered regularly throughout the product development cycle, but each case is different and your IP strategy needs to be tailored accordingly, so if you have any questions about how to formulate your IP strategy, and how to ensure that it evolves as you move through the product development cycle, download our ebook for more information, or book your free initial consultation now, to see how we can help.
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Email: info@strachanip.co.uk
