An investment in knowledge pays the best interest – Benjamin Franklin

From the shed workbench to a shiny new box on a store shelf – it is every inventors dream to see their inventions cross the divide. Along with the crossover however, comes the minefield of intellectual property (IP) protection. With so much invested in your creativity, it’s only wise to seek protection for it, but how to get through to the heart of the right IP strategy for you?

With the current media hype hurtling patent wars at us from every paper, it is rather easy to get carried away with believing that all IP portfolios should form patent treasure troves. A quick look at the patenting process or an example of a patent draft can however seem daunting to inventors – what on earth seems to be the point of all the fussy language? What is the importance of all the dates I need to remember? What if I want to file a patent in multiple jurisdictions? The simplest way around this is to start from what you know – your invention.

The first thing to realise is that not all inventions are patentable. Excluded from the list are: ideas; methods of doing business; performing a mental act; playing a game; computer programs; aesthetic creations and methods of treatment or diagnosis.

Let’s say you are based in the UK and you’ve developed an invention which you have reason to believe will be a huge success. You may be over the moon with your brainchild (and rightly so!), but now is not the time to be bubbling your excitement over to your neighbour, friend or even potential manufacturer. Before deciding on the development of an IP strategy, your first priority is to guard your invention – be sure to have a non-disclosure agreement (NDA) in place before lifting the lid off your treasured creation.

Now that it is safe to talk about what you have created with anyone who is willing to sign your NDA, ask yourself the following questions:

  1. Is my invention fully developed?
    1. This is an important (and often overlooked) question. Most forms of IP protection are time sensitive (they don’t last forever) and once you start the process, the clock starts ticking. It would be in your best interests to have your invention as ready as possible for distribution/licensing to maximise protection periods before launching an IP strategy. Some forms of protection will still buy you some time to determine where you would like to protect your product further, but if you wish to license your invention, then having a fully developed concept ready to roll out will be a more attractive package to sell in a proposal than a half-baked idea.
    2. How do I plan on manufacturing my product?
      1. If you plan on manufacturing, consider where in the world this would be cost effective for you and if you would need protection for you invention in that jurisdiction.
      2. What are my commercial interests?
        1. This is another very important question to address. It will help you decide what sort of protection you need in terms of

i.    time scales and length of protection for your invention

ii.    scope of protection for your invention (i.e. is your invention useful in more than one area of commercial interest? Could it be extended to other areas of application? Or would it benefit you more to focus on a narrow area of interest to increase your chances of IP protection (particularly applicable in patenting).

  1. What sort of features does my invention comprise?
    1. This will finally help you to decide what type of protection is best suited to your invention.

In answering question 4 above, there are a number of factors to consider to determine which tools in your IP portfolio would best benefit you. The following table outlines various forms of IP protection for inventions and how to determine whether they apply to your invention:

IP Right Applicability Notes
Patent You can patent your invention if it is:

i.        novel

ii.        inventive

iii.        capable of industrial application

iv.        not excluded matter (as mentioned above)

Novelty: no one in the world has done it before you file your patent and you have been sure not to disclose your invention before filing.

Inventive step: you have to be able to show that your invention would not have been an obvious solution to someone who is knowledgeable in the area (but not necessarily an expert).

A patent is a territorial right and lasts for 20years from the priority date (usually the date when it is filed). Is this period long enough for you to make a return on your investment? This is important because if you decide to patent your invention you are obligated to disclose exactly how it can be replicated so that when your patent expires your invention becomes free for use by all.

UKIPO link: http://www.ipo.gov.uk/types/patent.htm

Registered Design Protects overall visual appearance; considers shapes, colours and materials.

To obtain registered design protection, your design must be:

  1. new
  2. possess individual character
New: No identical or similar design exists before you file.

Individual character: must create a different overall impression to other designs.

This right does not have the same requirements for non-disclosure as patents: you can apply for a registered design up to 12 months after you have disclosed the design.

UKIPO link: http://www.ipo.gov.uk/types/design.htm

Trade Secret Useful for:

  1. indefinite protection
  2. inventions difficult to reverse engineer – such as processes
Trade secrets are always worth mentioning as an IP protection strategy. Often overlooked, they actually form quite a valuable tool in protecting your invention. They enable protection for an indefinite time period (never expire), the only danger being that no remedies for reverse engineering apply. If however, your invention is complex and multifaceted enough to make it difficult to reverse engineer, then trade secrets may be of value to you. NDA’s are vital in this area.

 

You can of course, implement a number of these solutions simultaneously, and in fact this is advisable in building a strong IP portfolio. For instance, you can patent your invention if it satisfies the above criteria and you could simultaneously protect its’ visual appearance with a registered design. (Note other forms of protection such as Trade Mark protection can help to build a presence and reputation in the mind of the consumer).

Summary of key points to consider:

  • What are your commercial interests?
    • How does this affect timelines in terms of competitive advantage? Patenting is a time sensitive form of IP protection and this should be kept in mind when developing an IP portfolio.
    • What territories are you interested in operating in? (UK/EU/US etc.)
    • Is your product/process patentable? Ask yourself:
      • Is my product new? Here it is important to be sure that you haven’t disclosed your invention to anybody. NDA’s apply.
      • Is it inventive? Or is it obvious?
      • Is it useful?
      • Would your invention be better protected by a different and/or additional form of IP protection aside from patenting?

Finally, remember to enjoy the excitement and potential for success in your invention! After all, your IP is something you should be proud of. Protective strategies can be laden with admin but when it’s all good and filed, it would do us all well to remember that IP rights exist to encourage innovation and inspire ourselves and others to create with the passion and flair that does the term ‘invention’ justice. As Mario Andretti put it “Desire is the key to motivation, but it’s determination and commitment to an unrelenting pursuit of your goal – a commitment to excellence – that will enable you to attain the success you seek.”

By Ghabiba Weston

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