Being able to sell is more important than being patentable
Product designers and consultants are in the business of not only creating new products, but also in helping their clients get their new products to market. What if your newly design product, which might even be patentable, turns out to infringe someone else’s IP? What can product designers do to mitigate the risk of IP infringement prior to launch?
Getting a patent does not entitle you to sell your product
It seems counterintuitive, but everyone on the team must understand that getting a patent does not give the patent owner the right to sell their patented product. A patent provides the patent owner with the right to exclude others from using the patented invention. When it comes to launching a new product, product designers and their clients should not take any comfort in the fact that they obtained a patent for their product design. Their patent might give them the right to stop copycats, but no protection is provided for them to sell their own product.
At a minimum, product designers and consultants should advise their clients to have a Freedom-To-Operate (FTO) search performed by either an IP law firm or a reputable patent search company. If the client declines an FTO search, then at least you warned them.
Getting a patent can prevent others from copying
Even though a patent does not protect the patent owner from liability, it can give the patent owner the right to stop others from using the patented invention. For clients interested in licensing, a patent would also provide the client with the ability to license the patented invention.
Unless your client is one of the rare startups flush with cash, they will need to raise capital. Having patent-pending status can increase the likelihood of investments. For any functional products, product designers should encourage clients to file utility patent applications as soon as possible. For fun products where the appeal is in the looks, design patent applications should be filed.
Search trademarks before deciding product name
Before investing substantial resources and time into developing a brand, make sure it’s available first. Otherwise, you may be on the receiving end of a cease-and-desist letter which will require either litigation or a change in your trademark. Either way, it’ll be expensive and a huge hassle.
File a trademark application before launching product
You don’t have to wait until after the product launch to file a trademark application. An Intent-To-Use (ITU) may be filed before the trademark is used on any goods or services. Securing an earlier filing date provides significant advantages. Again, search the USPTO trademark database or have your IP attorney do it before applying for your desired trademark.
If your client has been selling product for quite some time under an unregistered mark, urge them to apply now. Otherwise, they risk the additional cost of opposing or canceling an earlier filing for a similar mark by a third party. Why give competitors this advantage?