By April Wurster, David Nigro, and Tony Caldwell, the law offices of Snell & Wilmer
Because intellectual property (IP) is frequently perceived as complex and costly, many engineers, scientists, laboratory professionals, and R&D managers avoid making decisions about whether their projects can be protected by intellectual property. The various types of IP protections available (including utility patents, design patents, copyrights, trademarks, trade dress, and trade secrets) and their different filing requirements add to the confusion, making it difficult for non-lawyers to determine when and if there is intellectual property worth securing. This article will examine when you should consider consulting with an IP attorney and the various types of IP you may wish to pursue.
Rolling out a new product or version 2.0
Anytime you are launching a new product or a new version 2.0, you should consider consulting with an IP attorney. In the conversation with your IP attorney, you may want to concentrate on the new distinguishing features, particularly those that set your new product/improvement apart from competitors.
Engineers and scientists frequently regard new innovations as obvious. However, the standard for obviousness at the Patent Office differs from what a typical engineer/scientist would consider obvious. For this reason, when a new product or version is released, it is often worthwhile to consult with an IP attorney to see if, in their opinion, there is anything available to protect. Even if the addition of a new feature is obvious, it is often how that new feature is incorporated into your specific product that makes it patentable.
Protectable features include new mechanical and electrical configurations, new chemical formulations, industrial processes, “smart” systems controls, and aesthetic features. It is best to consult an IP attorney early in the process to be sure that you do not inadvertently take actions that will prevent you from obtaining IP protection.
The same can be said for adding new features to a product. While the new functionality may or may not be obvious, you should consider examining if your specific implementation contains features that can be protected by IP.
Improvements to existing features
Improvements are frequently focused on an existing feature, such as user interface enhancements or quality enhancements. You should consider evaluating these for protection. For example, moving a product from 95% to 99% accuracy can be extremely difficult. The efforts made to get you there are frequently patentable. From a patent standpoint, both horizontal and vertical improvements should be considered.
User interfaces, for example, can also be protected by design patents and/or copyrights, which are less expensive ways to protect these improvements than utility patents. Thus, even if you do not have the budget to protect every improvement through a utility patent, you can still take advantage of lower-cost IP.
Sales teams often want to make a particular client happy by creating a new feature. Any time a new feature is created, no matter the reason, consider protecting it. The fact that a particular client thinks the new feature is desirable suggests it may have value.
Localization features that enable you to reach more markets are frequently overlooked in terms of IP. Any IP that allows you to enter a market while keeping your competitors out can be extremely valuable.
Solving common problems
Finally, new solutions to common problems are frequently patentable. If your industry faces a common problem that you can overcome or ameliorate, provides a competitive advantage you may want to consider protecting. Any IP that solves a common problem that your competitors cannot use can be extremely valuable.
Joint development or research collaboration agreements
When your company enters into a new contract, especially a joint development or research collaboration, you should consider consulting with an IP attorney. Background IP is frequently not transferred in these types of contracts. As a result, if you can file a patent on the proposed combination contemplated by the joint development/collaboration, this patent will most likely be treated as background IP (owned by your company) under the contract. Filing a patent before collaborating or exchanging any confidential information with a potential business partner is typically ideal so that there is no allegation that the new patent is joint or developed IP.
Similarly, if you are partnering to provide new integrations or new ways of using your software, you should consider a method patent covering the integration. Again, consider filing a patent before you collaborate or share confidential information with a partner.
When your company achieves certain R&D milestones, consider talking with an IP attorney. These R&D milestones may be good opportunities to consider protectable IP that has been developed.
When you have a new prototype, you may be ready to file either a utility or design patent. Alternatively, if cost is a concern consider a copywrite or trade dress (the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers) at this stage. Strong portfolios utilize many different forms of IP. Lower-cost IP allows you to protect your R&D investment, diversify your IP portfolio, and stretch your budget.
Design reviews/design locks
Design reviews and design locks provide another opportunity to determine if IP should be filed. You are likely finished with development at this stage, so you can focus on safeguarding your product’s essential characteristics. Consider adding “IP assessment” to the agenda at design review/design lock meetings.
This is also a good time to reflect on the most challenging obstacles encountered during development. These challenging obstacles act as a clue to identify patentable inventions. Returning to the idea that engineers/scientists frequently consider their innovations obvious, if your team tried and failed, the solution was most likely not obvious.
Does your R&D department have any SMART goals? SMART goals are often patentable. Consider adding filing a patent to your SMART goals. When the development is complete, you can easily achieve the second SMART goal (for example, filing a patent).
Marketing departments are often keyed into the unique features of your product. If your marketing department wants to highlight a distinguishable feature, it is frequently protectable by IP. Similarly, if your marketing department wants to highlight a distinguishable feature, it is often a good idea to protect it. Consider filing a patent if the distinguishing feature has not yet been publicly disclosed. Consider copyright and trade dress if the concept is already on the market. Furthermore, the United States and some foreign jurisdictions provide a grace period for filing a patent after an improvement has been publicly disclosed, so you have some time in some jurisdictions if the improvement has already been publicly disclosed.
Creating branding and marketing for a new product or feature often means that new trademark protections are in order. Trademarks protect new or refreshed logos, taglines, and brand designs. Trademark protection helps to distinguish your product in the marketplace and defend against counterfeit products, which are often imported from overseas.
Updates to the website
As a general rule of thumb, you want to focus IP protection on improvements that have commercial value. Marketing and sales teams are often good at identifying what improvements have commercial value. Review proposed updates to your website as a key indicator of what features have commercial value and are therefore available to protect. It’s a good idea to talk to an IP attorney before the website is updated.
Resolve a pain point
Pain points are only pain points because they are difficult to address/resolve. This suggests that the solution is non-obvious and therefore likely patentable. Resolving pain points is also often protected by trade secrets if, for example, the pain point is a backend process such as manufacturing. It is important to consult an IP attorney familiar with trade secret law because in order to enforce a trade secret, courts consider reasonable efforts to protect the trade secret – such as restricting access to trade secret information.
When to file IP
You will not likely file IP on every new product, improvement, distinguishing feature, or resolution of a pain point. Whether to file a patent or other forms of IP, depends on your budget and your perceived likelihood of success at obtaining the IP. Strong IP portfolios frequently use a combination of utility patents, design patents, trademarks, and copyrights. If one of these aspects is missing from your intellectual property portfolio, it may be worth investigating whether you can capitalize on the missing form of IP. It is a good idea to work with an IP attorney who will take your business, employees, products, customers, and competitors into consideration to provide strategic guidance.