How to avoid a ‘gloves off’ IP dispute when innovating

You’re working on something big. Your innovation is going to take the market by storm. But have you protected your intellectual property (IP) from the start?

Imagining herself a consumer product innovator for a day, partner at law firm Thrings, Megan Jefferies, goes through the steps of her IP strategy for each stage of the product development cycle.

It’s mid-winter and I’m feeling the chill. For the sake of this article, I’m an innovator by day and solicitor by night, developing a product I would actually buy – self-heating gloves. They need to be sleek, attractive even, and practical to use (unlike those handheld packs that were big in the 1990s and required boiling after each use).

The lightbulb moment

While there is no ‘property’ in an idea, not protecting that idea risks losing claim to the different aspects of a finished product further down the line. So I make protection a priority from the word go.

Although my design drawings and labelling are automatically protected by copyright (this is an automatic right and so doesn’t require registration), the level of protection it offers me is limited. There are several ways to strengthen an idea’s protection – the one(s) to choose will depend on what is unique about the product or brand.

• Patent – my gloves include new technology so a patent will stop others copying my invention.
• Design right – I’ve come up with a new look and feel for the gloves, so will be registering a design right to protect those. You can do this for part, or all, of a product.
• Trademark – the product name I’m thinking of is standout and I don’t want anyone else marketing something similar, so I register a trademark. More on this under ‘Developing the product’ below.

Getting down to research

I’ll be keeping my innovation as secret as possible from the idea stage onwards – this is important! I need to involve some scientists and manufacturers though, so I ensure their involvement is subject to strict confidentiality by making them sign a non-disclosure agreement (NDA). You can include an NDA clause as standard in employment contracts too. If someone breaches this – it’s gloves off.

I keep notes of meetings, brainstorms and designs at all stages of development and file them carefully. These could be crucial if I need to prove the design was mine (in a copyright claim, for instance).

Not IP-related but worth a mention: this early stage is a good time to speak to an accountant who knows about research and development (R&D) tax credits (I may be eligible for some tax relief).

Developing the product

With my solicitor hat on, I find out whether the design is different enough from anything else on the market (and that I’m not infringing anyone else’s patents). I should, at this stage, admit to discovering that self-heating gloves already exist – who knew? Let’s pretend my technology is new though. I protect it (a legal expert can help you with this).

Part of the development stage is branding. It’s never too early to think about branding – it can make all the difference to a product’s success. If you have a strong product name, company name, logo or all three – a trademark (or marks) should be registered.

Being first to launch, and with a knock-out brand, can offer the best protection, particularly if a patent or design right is not available. This could be because there are no relevant registration categories for your product, or your product is similar enough to another to disallow you from registering it (while not technically infringing the IP of those other products).

I’m thinking of naming my product ‘Palms of Majorca’, but I need to do my due diligence. It’s essential to ensure there are no other self-heating gloves (or similar products) out there with the same or a similar name. A quick internet search hasn’t brought any to light.

To put my mind at ease, I do, a full ‘clearance search’. A solicitor or trademark attorney can carry one out for you. They’re not an expensive exercise and can protect you from a trademark infringement or ‘passing off’ claim down the line (if you inadvertently use a name too similar to someone else’s for example).

Testing, testing, 123

I’m happy with my brand and it’s been cleared for use, so I continue to test my product. While this is happening, I make sure my patents, trademarks and design rights are nailed down.

Trademarks only apply in the jurisdictions in which they’re obtained – so I remember to apply for one in every territory that I plan to sell my gloves to.

During testing, I make tweaks to my design to ensure that as many elements of the design as possible are protectable.

Time to shift those units

Palms of Majorca come onto the market just as the last leaves of autumn fall and they’re selling like hot chestnuts at a Christmas market (hurray). However, the work to protect my invention is not over – I must be vigilant and make sure I enforce my rights in order to avoid a competitor muscling in on the market I’m working so hard to establish.

But wait – I catch wind of a threat. If this happens to you, speak to a solicitor immediately. Given that I am one and I’m properly protected, it only takes one firm letter to stop the infringement. While this is all it can take, it’s not always the case.

Will Brexit affect my IP?

Be aware that for trademark rights to continue to apply in the UK and EU, you need to be able to prove that the trademark continues to be used. If it lies dormant for more than five years, it can be challenged. Currently, use of the trademark in the UK constitutes use in the EU, but this is likely to change after the Brexit transition period (from 2021).

Since my business is growing well in northern Europe, it won’t take much to demonstrate that I’ve been using the trademark in at least one EU country. I keep records of sales, marketing campaigns, trade shows and contact with customers.

Next, I concentrate on growing my fictional customer-base further in those territories. Happy days. Back to reality now – where do I order myself the real deal?

Megan Jefferies is an IP lawyer operating from Bristol, Bath, London and Swindon.

Thrings is the proud sponsor of the Innovation & Technology category at the Business Leader Awards 2020.