The three phases of IP protection for disruptive technology: Phase 3

Cory Stobart

Now that you have taken the initial steps to protect your intellectual property (IP) and gone on to launch your product safe in the knowledge that the IP is at least provisionally protected, Cory Stobart, patent attorney at Adamson Jones IP, takes a look at how you should continue to manage that IP to ensure its value to your business.

The first, and easiest, step you should consider is simply to keep referring back to your IP. You will have filed your patent application(s) and/or design registration(s) before launching your product, under the assumption that a particular feature or concept would take off with your customers. Then, following sales and feedback, you will often find that customers warmed to your concept for slightly different reasons than you had predicted.

It is therefore important at this stage to check whether your IP continues to reflect the value in your product. If your updated understanding of your customer’s needs is not reflected in your existing IP strategy, then you risk protecting aspects of your concept that do not provide value. This offers would-be competitors an opportunity to copy the important features of your concept whilst skirting around your IP protection.

You may also find that post-launch feedback leads to the refinement or development of certain features of your original product or service, which may in themselves be independently protectable. It is not uncommon for second or third-generation patents or designs, originating from an initial, first-generation concept to be the most valuable in the long run.

One classic trap that is more prevalent than you may think, is for a trade mark owner to update their brand or logo such that it is no longer covered by their existing trade mark registration. Not only can this mean that the new trade mark may not be protected, but also risks losing the original trade mark due to it being revoked for non-use after a period of 5 years.

In short, make sure that your attorney is aware of any developments or changes to your concept, design, and any branding. This will enable them to steer or re-file any existing IP protection to maximise its effectiveness, and to advise on how to protect any new IP that arises.

Another decision that you will have to make is whether to protect your IP overseas and, whilst in an ideal world you would pursue protection all over the world, this very quickly becomes an overly expensive endeavour. It is therefore important to identify those territories that are of most commercial value to you for IP protection, i.e., in view of your biggest markets, your distribution channels, and/or manufacturing facilities.

With regards to patent protection, this decision will typically need to be made within 12 months of filing your first application. However, there is an international patent application process under the Patent Cooperation Treaty, which can be filed at this stage to provisionally safeguard your patent rights in most countries across the world, should you later wish to do so. Effectively, filing a PCT application delays the decision on the countries in which you ultimately want to pursue patent protection for a further 18 months, at which point you can identify key territories based on a greater understanding of your key markets.

With regards to trade marks, overseas trade marks need to be filed within 6 months of your first trade mark application if you want to preserve the original filing date. However, this is not always essential and overseas trade mark applications can often be filed at any suitable time in the future whenever a new country/territory becomes a viable prospect for your product or service. It is therefore worth updating your attorney as and when different markets become important to you so that you can ensure you are protected.

Even if you have formal agreements arranged with distributors for different countries, owning an additional layer of IP protection in the background can be critical. It is not uncommon for distributors to decide to ‘go it alone’ and back away from a distribution agreement if they feel it would be more profitable to compete, rather than cooperate, with you. Owning the fundamental IP protection in that country can be your last line of defence against this type of competition.

Finally, on a somewhat different note, it is worth considering your long-term plans, and in particular any exit strategy you might have for your business. Just having a basic IP portfolio in place will probably add some value to your business but having an IP portfolio that is well adapted to your business plans can add a huge mark-up to a valuation, especially in the eyes of informed potential buyers. In this regard, all the ongoing considerations that we have discussed above are key to ensuring you put yourself in the best position for when this time comes.