Registered IP refers to types of intellectual property rights that have to go through some sort of application or registration process in order to exist and they do, inevitably, carry a cost. Although there are others, the three main types of registered IP are: patents (for technical innovation), registered designs (generally for the outward appearance of a product) and trade marks (for brand names and logos).
A new product or process may be eligible for any or all of these IP rights, but when filing applications for them, timing can be key and, arguably, second only to the application content when it comes to ensuring maximum value and safeguarding your business.
There is no real ‘one size fits all’ IP filing strategy, but here are some tips on when to file applications for registered IP to best suit your business.
1. Patent applications must be filed before there is any non confidential disclosure of your technical innovation.
Use NDAs (Non Disclosure Agreements) to speak to essential people (e.g. product developers, potential investors, etc.) at least until after a UK patent application has been filed. There are some useful NDA templates here:https://www.gov.uk/government/publications/non-disclosure-agreements.
BUT
2. Don’t file your patent application too early in the development process.
Tempting though it is to get an early filing date and ‘plant your flag’, so to speak, you only have 12 months from that initial UK filing to “top up” your application with further technical detail arising from the development process and to file corresponding overseas applications (if overseas protection is needed). And 12 months is not a long time in the field of product development. Ideally, at this 12-month point, the technical elements of your product will be more or less finalised and you will have a clear (ish) idea of your manufacturing, licensing and sales strategies. So, using your product development timeline, try to work back from that point to decide on the best time to file.
3. Don’t file your registered design application too soon.
A registered design (for the outward appearance of a product) should represent the product as it is to be presented to the market, so it shouldn’t be filed until that has been finalised.
4. Use grace periods only if appropriate and absolutely necessary
Some territories, notably the UK, EU and USA, allow for a so-called ‘grace period’ of one year to file applications for design registration. This means that you have until the end of 12 months from when you first disclose your design to the public to file a valid application for design registration.
BUT
Tempting though this may be to use these grace periods (especially from a budgeting perspective), there are at least two significant drawbacks:
a) most countries do not have this type of grace period, so if design protection is needed anywhere beyond UK, EU and USA (and a small number of other countries), then you must file an application for design registration before there is any non-confidential disclosure of the design.
b) there is a danger that someone else could file an application for registration of a design very similar to yours before you have filed your own application for registration, which could weaken or even invalidate your later design registration.
5. Don’t file applications for trade mark registration too soon.
A trade mark registration in the UK is vulnerable to cancellation due to non use after five years, so you need to make sure that you will be using that trade mark in a commercial setting well before the end of 5 years from registering your trade mark.
BUT
6. Don’t leave it too late either.
You can file applications for trade mark registration after the trade mark has been used, and there is no legal requirement for it to have been kept confidential beforehand. In theory, then, applications for trade mark registration in the UK and overseas can be delayed up to the point of launching a business offering, and even beyond.
Nevertheless, it isn’t wise to leave it too long because, once again, there is a danger that someone else may have slipped in in the meantime and registered something similar for similar goods or services which may, not only block your own registration, but result in you actually infringing their trade mark.
Either way:
7. Always have a trade mark search performed early.
Before you launch a business offering under a chosen trade mark in any country (and, ideally, before you commit to the associated packaging and marketing assets for that launch), make sue you have a trade mark search performed in that country to make sure you won’t be infringing someone else’s earlier rights. Otherwise, if you later find out that your trade mark infringes someone else’s registration, rebranding can be a costly affair, and an infringement action against you even more so!
8. Get advice
If you need any intellectual property advice, please book a free initial consultation by emailing vicki.strachan@strachan.co.uk or calling +44 (0) 7714 797135, or visit our website at https://strachanip.co.uk/contact/
