You’ve come up with a design for a new product… what to do next

Picture the scene. You’ve just completed the successful launch of a new all-singing, all-dancing widget. The product has been very well received, there have been some very positive press reviews and customers seem over the moon with the product. Just as well really, as the time and effort involved in developing the product were huge, producing tools to manufacture it have cost a fortune, and the marketing costs were enormous. The only problem is that so soon after launch some competitors have seen the new design, like the look of it and have already launched something similar. If you don’t take action to stop them, an awful lot of this effort and expense will have been wasted.

Fortunately, before you launched the product, you took some advice regarding protecting your intellectual property. As a consequence, you have already put in place a patent application covering the way some of the new functionality is achieved. In addition, the process to register the look of the product in Europe has already been completed. The patent, once granted, will give you a monopoly allowing you to stop others from using the invention described in the patent in the UK for up to 20 years from when the application was filed. The registered design covers what the product looks like, and allows you to stop others from making and selling products to that design. It can last for up to 25 years.

Patents, in essence, are used to provide protection for the way things work, allowing you to stop others from making products that work in the same way. They can be used to cover mechanical inventions, but can also cover, for example, electronics, new pharmaceutical compositions or the methods or processes by which devices operate. Whilst historically, the protection of software using patents has been difficult, provided the use of the software results in something technical happening, then it is often possible to protect the software, or at least the methods or procedures followed by the software. Most patents cover relatively small enhancements to existing products or processes, for example which result in the product or process working better, providing additional functionality, working more efficiently or being easier and less costly to manufacture. Patent cover is not restricted to just totally new discoveries, and so can cover things that may not, on the face of it, appear to be that clever.

In order to obtain a patent for an invention, the invention has to be new as at the date upon which the application for the patent is filed at the Intellectual Property Office. In theory, any public disclosure of the invention before the patent application is filed will be damaging to the validity of the patent. So, it is best to ensure that the patent application is filed before the invention is shown to any third parties, before it is advertised and certainly before it is put on the market. If a disclosure to a third party before the application is filed cannot be avoided, for example if the third party is assisting in the building of a prototype for you, then always ensure that they have executed a non-disclosure agreement before the invention is shown or described to them.

To file the application, we need to submit a written description of the concept we are trying to cover along with a reasonably detailed description of one example embodiment of the invention. Once the application has been filed, the UK Intellectual Property Office will conduct a search for documents describing similar ideas, and will use the result of the search to decide whether the idea is new and inventive. Provided it is found to be new and inventive then we can expect the patent to be granted. This process typically takes 3 years or so.

Registered designs cover what designs look like, and so to submit a registered design application we need to submit drawings or photographs showing the product. The registration process is usually quick, typically taking only a few weeks.

Harrison Clark Rickerbys’ Intellectual Property team can help with the preparation and filing of patent applications, registered designs and trademarks, and provide other advice regarding the protection and exploitation of intellectual property rights.

Author
Richard Bailey
Patent Attorney
Email: rbailey@hcrlaw.com