Timing is Everything – When to Think About IP During the Product Development Process
When to Think About IP During Product Development
So, you have an idea for a product and are now exploring pathways for bringing that product to market. But what does that process look like? And where does intellectual property (“IP”) fit into all this?
For many innovators, IP is often something that is considered much later in the product development process, and often only after a product is fully developed or is already in the market. However, implementing a solid IP strategy early in the product development process is key to maximizing the success of your product and avoiding pitfalls.
Acorn Product Development and Bochner PLLC have come together to identify where and when IP fits into the product development process, including when to file patent applications, the strategic use of provisional vs. non-provisional applications, and when IP aligns with key product development milestones.
Synergy Between Product Development and IP Strategy
The relationship between product development and IP is symbiotic. A well-planned product development process ensures that your product is high-quality, viable, cost effective, and marketable. On the other hand, establishing a solid IP strategy ensures that your developed product remains protected from competitors and is free of risk.
Oftentimes, a good IP strategy may even impact how you design your product to mitigate infringement risks. With 352,066 utility patents and 34,877 design patents being granted in 2020, it is important to ensure early on that your product has a plan to distinguish itself.
Throughout this article, we will outline how IP considerations can be integrated into each phase of development, with insights from both the legal and design perspectives.
Overview of the Product Development Timeline
The typical product development process can be broken into key phases, each with its own relationship to intellectual property (IP):
PHASE 0 – Investigation & Requirements Definition: This initial phase focuses on understanding market needs, technical requirements, and regulatory constraints. Research into competitor products and existing patents is essential at this stage. Filing a provisional patent may help secure early ideas while the investigation continues.
PHASE 1 – Concept Development: the requirements are defined and brainstorming and ideation sessions take place to generate potential solutions. Early sketches and rough models are developed. At this point, it’s wise to evaluate the patentability of key innovations and start planning for utility or design patents if unique concepts emerge.
PHASE 2 – Design and Prototype: In this phase, detailed designs are created, and functional prototypes are built. During this process, new innovations often arise, and it’s critical to protect them through appropriate IP filings. Ensuring no infringement on existing patents through a freedom-to-operate search is also crucial.
PHASE 3 – Production Development: The product is prepared for large-scale manufacturing, including tooling, materials selection, and supplier engagement. Protecting proprietary methods or processes as trade secrets becomes important during this stage, along with finalizing any necessary patent applications.
PHASE 4 – Manufacturing Support: The focus is now on refining the manufacturing process for efficiency, cost-effectiveness, and scalability. As the product moves toward launch, enforcing patent protection and considering trademark filings for branding and logos help secure the product’s market position. Ongoing monitoring for potential infringements also begins at this stage
Throughout the entire process, maintaining IP protection is crucial to ensure that innovations are legally safeguarded, enabling companies to defend their market position and maximize their investment in product development.
Early IP Considerations
Steps to safeguard your IP should be taken from day one. This includes:
Maintaining confidentiality: Avoid any public disclosures about your invention until protection has been secured.
Use Non-Disclosure Agreements (NDAs): Executing NDAs with third parties (e.g., potential investors, manufacturers, or development partners) when discussing your idea can help prevent unauthorized disclosures.
Documenting developments: Keeping thorough records of your invention and its conception and development can help prove you as the inventor and owner if a dispute ever arises.
Public Disclosure Considerations: Under U.S. law, inventors have a one-year grace period after public disclosure to file a patent application. However, many foreign jurisdictions do not offer any such grace period, meaning any public disclosure before filing could forfeit patent rights. This issue can be avoided by filing at least a provisional patent application before presenting at trade shows, crowdfunding campaigns, or publishing product details.
If a disclosure has been made prior to setting up one of these documents, work with your IP counsel to identify any potential impacts and establish a plan to file something by the expiration of the grace period.
Provisional vs. Non-Provisional Patents
As mentioned above, a useful tool to allow you to safely make public disclosures of your product is to file a provisional patent application. This type of application is a lower cost filing that establishes an early priority date while giving inventors up to one year to refine their invention before filing a non-provisional (formal) patent application. Provisional applications do not get examined but serve as placeholders.
Provisional applications make sense in the following instances:
When the invention is still evolving but an early priority date is desired.
Before presenting an invention publicly or discussing it with potential partners.
When seeking investment, a provisional filing can demonstrate early-stage protection efforts.
Non-provisional applications are ones that are examined and, if granted, lead to enforceable patent rights. Consider filing non-provisional when:
The invention is finalized and reduced to practice, with enough detail to support full claims.
Market readiness and commercialization plans are in place.
Competitive pressures demand securing enforceable patent rights sooner rather than later.
International filings are needed, requiring a robust application from which to claim priority to.
It’s important to note that design patent applications can only be filed as a non-provisional application. So, any design should be finalized before filing.
Parties filing either a provisional or non-provisional application should then consider whether to file their application internationally. Typically, such international filings should be made around either 6-months (for design applications) or 12-months (for utility applications) from the earliest filing date.
How Product Development Strategies Strengthen Your IP
A well-executed product development strategy can influence a product’s intellectual property (IP) and maximize potential innovations. Consider the following:
Innovation Novelty and Uniqueness: The level of innovation embedded in the product dictates the type of IP protection needed. If the product includes new functional features or processes, utility patents may be necessary. For aesthetic elements, a design patent might be more appropriate. Early assessment of the product’s novelty ensures the right IP filings are initiated before public disclosure.
Market Timing and Competition: Speed to market often determines how aggressively companies should file for IP protection. If a product is being developed in a highly competitive market, filing for provisional patents early in development can secure a priority date, protecting ideas before competitors can react.
Product Lifecycle: Longer lifecycle products benefit from robust patent protections to ensure competitors cannot easily copy or reverse-engineer them. Shorter lifecycle products, like those in fast-evolving tech sectors, may rely more on trade secrets and rapid iteration rather than long-term patent enforcement, which can be a slower process.
Geographical Reach: Where the product will be sold influences IP strategy. Global markets require consideration of international patent protection through mechanisms like the Patent Cooperation Treaty (PCT) or direct filings in target countries. This is especially important for companies expanding into markets with strong IP enforcement or high competition.
Design Complexity and Trade Secrets: Complex products, especially those with proprietary manufacturing processes, often rely on trade secrets for protection. If an innovative process is difficult to reverse-engineer, keeping it confidential through strong internal controls may be more effective than public patent filings, which require disclosure of the invention. Setting up such internal controls can be a complex process and is best done in consultation with an IP attorney.
Collaborations and Partnerships: Working with third parties, such as suppliers, contractors, or joint development partners, requires careful handling of IP through confidentiality agreements and clear ownership terms for new developments. Any resulting inventions during the collaboration must have IP ownership clearly defined in contracts to avoid disputes.
Product Modularity and Upgradability: For products that are modular or designed to be frequently upgraded, an IP strategy may involve filing patents not just for the core product but also for individual modules or features. This approach enables stronger protection over time and provides flexibility as the product evolves.
Regulatory Environment: Certain industries, such as healthcare, pharmaceuticals, and defense, are subject to strict regulatory requirements. These industries often have longer development cycles and higher costs, which necessitate stronger patent protections and regulatory exclusivities to safeguard the substantial investment in bringing products to market.
Branding and Market Perception: For products where branding plays a critical role, securing trademarks for names, logos, and slogans is key to building brand equity and preventing copycat products from diluting brand value. This is particularly important in consumer-facing products where brand recognition influences purchasing decisions.
Environmental and Sustainability Considerations: Products designed with environmental sustainability in mind may involve innovations in materials, processes, or recycling methods. These aspects should be protected through relevant IP channels, including patents on green technologies or materials. Additionally, protecting certifications (such as eco-labels) through trademarks can support market positioning.
3 Key Takeaways
Developing a solid IP strategy early on helps prevent any loss of rights and maximizes your competitive advantage.
The right timing for filing patents depends on the status of product development, public disclosure risks, and commercialization strategies.
Consistent and early collaboration between product development and IP counsel ensures you are maximizing your success at every stage of the process.
For those developing new products, proactive IP strategy is essential. Engaging with an experienced IP attorney and Product development team will help ensure that your innovations are protected and positioned for long-term success.