Patent Strategies To Consider Before Product Launch

October 21, 2022
- Patent Portfolio Commercialization
- Patent Portfolio Management

A product launch is an elaborate and daunting experience. Besides the marketing strategies and financial implications, there’s also the legal aspect to consider. In a world where cheap knockoffs hit the shelves in no time, protecting your invention becomes imperative. Without legal safeguards, your product is a sitting duck prone to copying. And we all know that doesn’t end well for the profit margins! Devising a robust patent strategy, therefore, becomes crucial to a product unveiling.

Patents for Inventions & Designs

Patents are granted either to protect a unique process, invention, or design. The United States Patent & Trademark Office (USPTO) grants utility patents to a novel and useful process, machine, or article of the invention. These patents focus on the ‘functional’ aspect of the product. For those seeking to secure the looks or appearance of a product, there are design patents. They help in safeguarding a unique ornamental design for an article of manufacture. The patent you choose will be determined by the characteristics of the product you wish to defend. In some cases, companies apply for both utility and design patents to enhance the level of protection.

Utility v/s Design Patents

Grace Period and Marketing Efforts

In the USA, ‘relative novelty’ is followed, which grants inventors a one-year personal grace period for public disclosure of the invention, before filing for a patent. the clock starts ticking on the grace period from the moment a business starts making marketing efforts. The following come under the category of marketing efforts:

Public use: Any product used by a person who is not under oath or sworn to secrecy to the inventor is considered public use. The only exception to this is using the product for the purpose of experimentation.
Publications in Print: Any physical or digital document that is indexed, cataloged, and accessible to the public counts as a printed publication. Flyers, websites, brochures, etc. All constitute publications. If the general public can access a document it becomes a printed publication.
Sale offer: If the inventor makes an offer to someone to sell the product/invention, it counts as an offer for sale, and thus a marketing effort. Even if the offer is rejected or the deal does not go through, it still qualifies as a marketing effort.

The First-Inventor–To-File Rule

An understanding of the grace period and marketing efforts is important to comprehend the first-to-file regime prevalent in the USA. Per this rule, the patent is granted to the person who first filed for it, regardless of who conceived of the idea or invented it first. This significantly cuts down any advantage the inventor may seek from the one-year grace period as mentioned above. If a third-party files for a patent during the grace period, they have a chance at securing it.

The original inventor can claim prior art with the marketing efforts as evidence to invalidate the third party’s patent. But this recourse can only be taken after many years, once the patent is granted. Even then, it will be a long process of litigation that may or may not turn in favor of the original inventor. Derivation proceedings can be another option. But this too is fraught with excessive documentation and proofs. The bottom line is that it is better to file for a patent before launching a product to avoid your invention being stolen or copied.

Things to Remember

There are a few points you may want to consider regarding your patent strategy with respect to a product launch:

Begin considering Intellectual Property Rights options at the ideation stage of the product. Seek expert guidance to decide which form of IPR from the available options suits your product best.
Conduct a Freedom to Operate Search in the initial stages to rule out any infringement on existing IP.
If you intend to apply for international patents, then you need to file before making any public discourses. The one-year grace period is only followed in the USA. Internationally, if an invention is disclosed to the public before patenting, it becomes ineligible for a patent grant.
Consider filing for a Provisional Patent if you do not have a budget for a full patent immediately. A provisional patent is valid for one year and buys you time to draft and submit a non-provisional patent application.
If budget is a big concern, then you can hire firms that charge a flat rate fee for utility patents. This gives you a clear idea of the precise amount required for the filing process.
Till such time as you file for a patent, make NDAs (Non-Disclosure Agreements) a part of the company’s external dealings.

The Case of Phhhoto

The founders of Phhhoto, an app that allowed users to take short bursts of photos which then looped to make a continuous video, have sued Meta with an anti-trust lawsuit. They claim that Facebook representatives reached out to the founders with an offer to integrate the app into their News Feed. After Phhhoto completed the technical work for integration, Facebook cut it off from its Feed due to growing popularity (as alleged by the company). Within months, before Phhhoto could launch its own app, Instagram unveiled the Boomerang app which was similar to Phhhoto. End result? Phhhoto was effectively driven out of business.

Conclusion

As is clear from the above discussion, the wise step to take is to apply for a patent before introducing a product. If you ignore IP then you risk the perils of litigation which are time-consuming and involve considerable expenses. Consult your in-house team at the conceptualization stage itself to safeguard yourself from infringement and assess the viability of the product. In the absence of an IP team, hiring a firm that can help you navigate through the complex IP procedures and terms is highly recommended.

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