(Research by Alysia Draper)
Do you have an innovative new product that has been undergoing product manufacturing and development, and that you are now excited to share with the world?
Perhaps you have already produced a prototype and are eager to start manufacturing your product on a large scale. But have you thought about protecting your product and what options are available to you to do so?
Intellectual property (IP) rights are intended to cover this form of protection and include filing a patent application to protect the inventive concept of the product, as well as a design application to protect the visual appearance of the product. The inventive concept of the product outlines the ways in which the product differs technically to similar products already available on the market today.
This article is split into two parts: Part 1 discusses patent applications and Part 2 discusses design applications. Both articles aim to identify:
- How to avoid disclosing your invention to the public and why it is important to avoid doing this.
- When to consider IP in regard to your invention.
- When to file a patent and a design application, and which order the applications should be filed.
- The options available if you change the underlying idea for your invention.
So, when do I start the product manufacturing process? The answer to that question first requires a basic understanding of patent protection, because the two things (product manufacture and patent protection) are intrinsically interlinked.
Part 2 – Design Applications
The aim of filing a design application is to protect the ‘look’ of the final product before the public launch of the product. Once the design application is filed, amending the submitted drawings is not possible. If you amend the visual aspect of your product, the filed design application will no longer protect your new product and you will therefore need to file a new design application. This second filing will have a later filing date and therefore the timeline of a design application starts from the beginning again.
There is a common notion that a design registration is a ‘poor man’s patent’, being cheaper and easier to obtain. Many people opt to file a design application, knowing that in the U.K. there is a 12 month grace period following the first disclosure of the product where the applicant can validly file a design application. The designer, owner of the design or an authorised individual is allowed to disclose the design in this period. This means that the visual aspects of your product can be disclosed and a design application can be safely filed later in the U.K.
Therefore, we would advise only filing a design application once the final product is clear in your mind: if the final product is not ready then it would be best to wait to file a design application until the product is finalised.
As a reminder from Part 1, if a design application is filed before a patent application is filed, the design application could disclose the invention. As patent applications do not have a grace period for disclosure in the UK, you have to ensure that a patent application is filed before the design application. This is shown visually in Figure 1.
We therefore advise against disclosing the invention before filing a patent and/or a design application, however the possibility of using the 12 month disclosure period before filing a design application gives you time to observe the reaction from the public before you file. If the response is negative, then you know that you need to change the design.
In conclusion, it is best to wait until both the patent and design applications are filed before the product manufacture process. This could save you time and money as you will be confident that the manufacture of the invention is worthwhile as the invention is suitably protected.
Summary
In this article we have concluded the following points:
- A design application can be filed to protect the visual aspect of your invention and we advise filing this after filing a patent application to avoid disclosing the invention unintentionally.
- IP should be considered before starting the large-scale production for your invention as this will prevent you wasting large amounts of money on an invention that may already be disclosed.
If you would like to talk to an expert in product design, Duku is our sister company and works closely with the attorneys at Albright IP. Duku is a high-quality and efficient product design company; you can browse the projects they have been involved in at https://www.duku.co.uk/. If you are interested in filing a design application and/or a patent application with Albright IP, and need assistance with the product design process, then the team at Duku will be happy to help.
If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.
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