In the world of product development, it isn’t just about building a better working mousetrap. Often, success can come from designing a better looking one too. And once you nail the perfect combination of design (or form) and function, you’ll want to make sure it’s protected with the appropriate intellectual property (IP) rights.
So, whether your product stands out and attracts customers because of its “look” or how it works, you might want to pay attention to this helpful advice from Smart & Biggar IP advisors Jeff Slater and Lionel Fishman.
Slater and Fishman are experts in IP law and practice and understand how it works in Canada and around the world. They help companies navigate the complex mosaic of IP rights – whether it’s through the use of trademarks, designs, patents or copyrights – and develop IP strategies that often lead to increased profits.
In Canada, a patent allows you to protect inventive aspects of how your product works, and an industrial design registration lets you also protect novel aspects of its unique appearance or design. In the U.S. the same IP rights are known as ‘utility patents’ and ‘design patents’.
“An industrial design or design patent protects the aesthetic appearance of a product,” said Fishman. “If a customer is drawn to your product because of how it looks, there’s intangible value that can only be realized through IP protection.”
How can a design or utility patent make your product more profitable?
Investing in patent protection requires commitment and careful planning to align and balance the costs, which can be significant, against meaningful returns in order to justify the expense. But, once obtained, a patent will provide you with exclusivity over your invention, allowing you to prevent competitors from adopting your patented technology.
Registering an industrial design is a cost-effective way to harness and leverage the value of your business’s IP, complementing or replacing patent protection depending on what unique or novel aspects draw your customers to your products.
A unique design is a sure-fire way to ensure your product stands out amongst your competitors and when protected with IP rights it can allow you to protect your market share and maintain a price advantage. Think of the example of design-forward companies like Umbra who elevated the ordinary waste-paper bin and other household items as a form of personal expression.
“Industrial design registrations are cost effective to acquire,” said Fishman. “The process is relatively simple because the application basically includes a set of drawings without a written technical description.”
Having a solid portfolio of patents and designs creates business value and can provide assurance and confidence to potential investors that your product and market are protected.
While the opportunity to maximize value by protecting your design IP is clear, you’ll also need to avoid some common pitfalls.
“An area that can become an issue is an energetic marketing department that wants to ‘tell and sell’ the product on their website or in a white paper too early,” said Slater. “When it comes to utility patents and design patents, showing off your invention or design too early in the process, and before you have filed for protection, is called “public disclosure” and can be detrimental.”
Protecting your product with a patent or industrial design is basically putting up a “do not trespass” sign that will keep other companies from copying your product and infringing on your IP rights. It may also protect you from a potential costly lawsuit down the road if someone else files an application for a similar invention, and you find yourself walking on someone else’s lawn.
Just ask Samsung — as Slater mentioned in his recent webinar for Invest Ottawa – who found themselves ordered to pay millions in damages to Apple when Apple successfully sued Samsung in the US for design patent infringement.
Start early and develop a strategic relationship with your IP advisors
Being an early bird can pay off by planning your IP strategy at the beginning of the product development cycle and speaking to experienced IP advisors, who may include a patent agent and/or patent lawyer.
“The clients who obtain the most value from their relationship with us are those who integrate IP into the product design cycle and call on us at the ideation stage,” said Slater. “For example, we can help them mitigate risk proactively by finding out if a company’s product or design is likely to infringe somebody else’s IP rights.”
When they find an opportunity to create valuable IP rights for a client, Slater and Fishman won’t necessarily be ringing the patent office right away, but they have a knack for getting the timing right. “There is a bit of a sweet spot for the best time to file but engaging us early on in the process is always the right move,” said Slater.
Finding that sweet spot is a bit trickier in a digital world because design cycles have gotten shorter and more iterative. If the product functionality or design gets modified in response to consumer feedback, you may need to apply for a new design registration or utility patent to cover it, added Fishman.
Figuring that out in a timely manner is a lot easier when your IP advisor understands the nuances of IP law, the technology of the product and the competitive market.
If you’re reading this and thinking that it’s too late for your product to be protected with a (utility) patent or an industrial design registration, because you’ve shared your brilliant idea with the world it’s still worth asking a business-savvy IP advisor to be sure you’re not leaving potential IP value or risk on the table.
How IP advisors at Smart & Biggar connect business goals with IP protection
“I view myself primarily as a business advisor who brings the IP perspective to the table,” said Slater. “There’s a crucial difference between identifying which aspects of a new product could potentially be protected and identifying those aspects that are worth protecting. The former can be done based only on technical knowledge, whereas the latter has to also be based on a deep understanding of the company’s business goals. It is in the latter approach that real business value is created.”
That’s why their client meetings start with a lot of questions and ‘discovery’ of the company’s business strategy and goals before any IP recommendations are offered.
“We try to tease out how to differentiate their product by understanding what it is and how it’s important to their customers,” said Fishman. “Once that’s clear, we can identify IP opportunities and recommend how to protect them.”
Slater and Fishman agree that understanding their clients’ business, goals, problems they’re facing, competitors and market is the starting point of any sound IP strategy.
They also know that securing the initial design registration or utility patent isn’t the end of the IP journey for a company.
If you want to know what happens next, stay tuned. We’ll be addressing that in the next article.