Are you considering IP at every stage of your product development cycle?

be frustrating, scaling

I am often asked: ‘When is the best time during the product development process to think about and secure intellectual property?’

The answer is that there is no ‘best’ time or ‘one size fits all’ rule; every case is different and requires a unique strategy. Ideally though, intellectual property (IP) would at least be reviewed at every stage of the cycle, to recognise its full value and that your product is adequately protected upon launch.

It is commonly recognised by the business community that a patent can protect a novel technical concept, and that an invention should be kept confidential unless/until a patent application has been filed. What is less clear is when the best time to file this application is. While it is tempting to do so at the concept stage, which may be the right strategy if you need to disclose the invention publicly in order to raise funding, there are some drawbacks.

The invention is likely to evolve over the subsequent stages, so it is important to check along the way that the patent application still covers the invention in its current form and consider ‘topping up’ the application to include new features/ technical subject matter within 12 months of filing the application. This deadline applies if the original filing date is to be retained, and if filing corresponding overseas applications.

A registered design (RD) is another type of registered IP, which protects the appearance of a product. Only the product’s appearance is protected, so it’s often best to wait to file an application until it’s ready to be launched. In the UK, US and European community, the law even provides for a socalled ‘grace period’ of 12 months, meaning that you can, in theory, file applications for RDs in those territories up to one year after you have publicly disclosed the product. However, this can be risky, not just because a third party could register something very similar in the intervening period, but also because few other territories offer this allowance, so if your product was disclosed to the public before the effective filing date of your RD in, say, China, the Chinese right would be invalid.

Trade mark (TM) registration also needs to be considered. You may wish to protect your mark in every country that you plan to sell into, but your budget and cash flow must allow for this. Unlike the other registered rights, your TM doesn’t have to be kept confidential until after you have filed a registration application, so an alternative might be to first file in your home markets ahead of the product launch, then file applications for registration in other territories as the market grows, spreading the cost over a longer period of time. It is however important to ensure that you are free to use your chosen TM in the countries to which you are selling (i.e. your use of the TM will not infringe someone else’s rights) and ideally before committing to branded materials.

The message is clear:

Get advice early in the product development cycle from a patent or trade mark attorney, and continue to review your IP strategy as the cycle progresses in order to optimise the potential value of your IP and, ultimately, your business. At Mathys & Suire, our attorneys can offer a free initial consultation to form a rough strategy of timings and budget for your product development.

Vicki Strachan Patent Attorney

head of Mathys & Squire’s Oxford office vjstrachan@mathys-squire.com www.mathys-squire.com

Winners of the Oxford Trust Awards 2019 revealed

The Oxford Trust Enterprise Awards for 2019 were announced at VentureFest Oxford. These awards recognise achievement and potential in entrepreneurship.

This year’s winners included a business enabling the next generation of satellite services, a pioneer of insect pest control through genetical engineering, a company that’s developed a fully industrialised diamond marking system, and two entrepreneurs who have developed a software platform that will speed up cancer diagnosis.

The awards are sponsored by Barclays, Marks & Clerk, Advanced Oxford, Oxford Innovation and product design company Triteq.

Young Entrepreneur Award: Liberty Foreman and Katherine Willetts

Dr Liberty Foreman and Dr Katherine Willetts founded DynamX Medical in 2015 to commercialise their PhD research into the clinical applications of infrared spectroscopy. They have developed a software platform for artificial intelligence and infrared spectroscopy to improve cancer diagnosis.

Start-up Award: Opsydia

Opsydia creates practically invisible structures inside transparent materials by using ultra-fast laser technology.

Breakthrough Technology Award: Oxitec

Oxitec is pioneering genetic engineering to control insect pests that spread disease and damage crops, including mosquito species that transmit dengue, Zika and malaria.

Award for Innovation: Oxford Space Systems

Oxford Space Systems is pioneering the development of a new generation of deployable antennas and structures that are lighter, less complex and lower cost than those in current demand.

Outstanding Achievement Award: Lionel Tarassenko, CBE, FREng, FMedSci

Head of Department of Engineering Science at the University of Oxford, Lionel Tarassenko was chosen for his contribution to biomedical engineering and innovation in healthcare technology systems. His pioneering work in the clinical use of machine learning has influenced the development of e-health in Oxford and around the world.