The three phases of IP protection for disruptive technology: Phase 2

Cory Stobart

Now that you have researched the intellectual property (IP) landscape and know that you can work your invention freely, the next key consideration is to understand how and when you should go about protecting your own IP, says Cory Stobart, patent attorney at AdamsonJones.

We are often asked about IP protection once it is already too late to obtain valid rights, and the key to managing this risk is to synchronise your IP strategy with your design/development process.

Typically, the first IP consideration is patent protection. Patents protect the inventive concept behind an innovation, and the key point to remember here is that the invention defined in the patent application must be new and inventive over everything available to the public at the point of filing. Importantly, this includes anything you make publicly available yourself, and it is therefore critical that, in the excitement that comes with the opportunity to market and advertise your new product or process, you do not scupper your chances of obtaining valid patent protection by talking openly about your invention too soon.

Thankfully, since patents protect the inventive concept behind your invention, the application can be drafted and filed relatively early in the design process, long before the product is launched, and often even before the final designs and implementations are decided upon.

Crucially, it does not matter that the patent application has not yet been granted, only that it has been filed, ahead of launch or any other self-disclosure. In the meantime, whilst you prototype and test the specific implementation of your invention ahead of launch, you can be safe in the knowledge that the overarching inventive concept is provisionally protected. The UK patent system also provides a 12-month window in which any developments to your technology can be accommodated, should you recognise the need to add or modify parts of the invention at this stage (more on this in our discussion of Phase 3).

In short – it is more important that you file a patent application before publicising your invention than it is to know exactly how you might implement the invention. It is also worth knowing that you don’t have to decide on patent protection for the whole world on day one. You can typically start the patent application in just one country, i.e., the UK, and delay decisions on overseas protection for up to 12 months.

Then, when it comes to nailing down the design and branding of your product ahead of launch, a search for existing registered design rights and trade marks is a useful exercise to ensure that you are free to launch your product. Nobody wants to build up to a big launch only to have to withdraw their product because their new product name is actually already taken!

Finally, and often just ahead of launch, it is time to register your own trade marks and, where relevant, your product designs. In doing so, this will prevent competitors producing look-a-like copies and will protect your expenditure by ensuring your customers can clearly distinguish your products from competitor products. However, you should not register your trade marks and designs until you are sure you have them in the final form. If things change after you have applied to register your rights, the resulting registration may no longer be fit for purpose.