Protecting your product’s design and function is an equally wise IP investment.


In the world of product development, it’s not just about building a mousetrap that works better. Often, success can also come from designing a more beautiful model. And once you’ve found the perfect combination of design (or form) and function, you’ll want to make sure it’s protected by the appropriate intellectual property (IP) rights.

So whether your product stands out and attracts customers because of how it “looks” or how it works, you might want to pay attention to these helpful tips from Smart & Biggar IP Advisors Jeffrey Slater and Lionel Fishman.

Slater and Fishman are experts in intellectual property law and practice and understand how it works in Canada and around the world. They help companies navigate the complex mosaic of intellectual property rights – whether through the use of trademarks, designs, patents or copyrights – and develop intellectual property strategies that often result in a increase in profits.

In Canada, a patent allows you to protect the inventive aspects of how your product works, and an industrial design registration also allows you to protect new aspects of its unique appearance or design. In the United States, the same intellectual property rights are called “utility patents” and “design patents”.

“An industrial design or design patent protects the aesthetic appeal of a product,” Fishman said. “If a customer is attracted to your product because of its appearance, there is intangible value that can only be realized through intellectual property protection.”

How can a design or utility patent make your product more profitable?

Investing in patent protection requires commitment and careful planning to align and balance costs, which can be significant, against meaningful returns to justify the expense. But, once obtained, a patent will give you exclusivity over your invention, allowing you to prevent competitors from adopting your patented technology.

Registering an industrial design is a cost-effective way to exploit and leverage the value of your company’s intellectual property, supplementing or replacing patent protection depending on what unique or new aspects appeal to your customers. to your products.

Jeffrey Slater, Senior Patent Agent

A unique design is a surefire way to ensure that your product stands out from your competition, and when protected by intellectual property rights, it can allow you to protect your market share and maintain a price advantage. Think of the example of design-forward companies like Umbra that elevated the plain wastebasket and other household items as a form of self-expression.

“Industrial design registrations are cost-effective to acquire,” Fishman said. “The process is relatively straightforward as the application essentially consists of a set of drawings with no written technical description.”

Having a strong portfolio of patents and designs creates commercial value and can provide assurance and confidence to potential investors that your product and your market are protected.

While the opportunity to maximize value by protecting your design’s intellectual property is clear, there are some common pitfalls you’ll also need to avoid.

“One area that can become a problem is a forceful marketing department that wants to ‘say and sell’ the product on its website or in a white paper too soon,” Slater said. “In utility patents and design patents, showing your invention or design too early in the process, and before you have applied for protection, is called ‘public disclosure’ and can be detrimental. “

Protecting your product with a patent or an industrial design is essentially putting up a “Do Not Trespass” sign that will prevent other companies from copying your product and infringing on your intellectual property rights. It can also protect you from a possible costly lawsuit if someone else files a claim for a similar invention and you end up stepping on someone else’s lawn.

Just ask Samsung – as Slater mentioned in his recent webinar for Invest Ottawa – who was ordered to pay millions of dollars in damages to Apple when Apple successfully sued Samsung in the United States for design patent infringement.

Start early and develop a strategic relationship with your IP advisors

Being an early riser can pay off by planning your IP strategy early in the product development cycle and talking to experienced IP advisors, who may include a patent agent and/or patent attorney.

“The customers who derive the most value from their relationship with us are those who incorporate IP into the product design cycle and engage us at the ideation stage,” Slater said. “For example, we can help them proactively mitigate risk by finding out if a company’s product or design might infringe someone else’s intellectual property rights.”

When they find an opportunity to create valuable IP rights for a client, Slater and Fishman won’t necessarily call the patent office right away, but they have a knack for timing. “There’s a bit of room for the best time to file a case, but engaging early in the process is always the right decision,” Slater said.

Portrait of Lionel Fishman
Lionel Fishman, director

Finding that sweet spot is a little trickier in a digital world because design cycles have become shorter and more iterative. If the product’s functionality or design changes in response to consumer feedback, you may need to apply for a new design registration or utility patent to cover it, Fishman added.

It is much easier to understand this in a timely manner when your IP advisor understands the nuances of IP law, product technology and the competitive market.

If you’re reading this and think it’s too late for your product to be protected by a (utility) patent or an industrial design registration, because you’ve shared your brilliant idea with the world, that’s still worth It’s worth asking a savvy intellectual property business advisor to make sure you don’t overlook the potential value or risk of intellectual property.

How Smart & Biggar’s IP Advisors Combine Business Goals with IP Protection

“I see myself primarily as a business advisor who brings the intellectual property perspective to the table,” Slater said. “There is a crucial difference between identifying which aspects of a new product could potentially be protected and which aspects are worth protecting. The former can be done solely on the basis of technical knowledge, while the latter should also be based on a thorough understanding of the company’s business objectives. It is in this latter approach that true business value is created.

That’s why their meetings with clients begin with lots of questions and the “discovery” of the company’s business strategy and goals before IP recommendations are offered.

“We’re trying to figure out how to differentiate their product by understanding what it is and why it’s important to their customers,” Fishman said. “Once that’s clear, we can identify IP opportunities and recommend how to protect them.”

Slater and Fishman agree that understanding their clients’ business, goals, issues, competitors, and market is the starting point for any solid IP strategy.

They also know that securing the initial design registration or utility patent is not the end of the IP journey for a company.

If you want to know what happens next, stay tuned! We will talk about it in the next article.

Looking for tips and advice on how to develop an IP strategy for your business?

Find a Smart & Biggar IP Advisor.


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