Launching a New Product? The IP Protection Checklist Before You Start Selling

Launching a New Product? The IP Protection Checklist Before You Start Selling

The weeks before a product launch are usually busy. Packaging is being finalised, manufacturers are being chased, websites are being built, retailers may be approached and marketing material is being prepared. Intellectual property can easily be left until the end. Unfortunately, some of the most important IP decisions need to be made before the product becomes public.

For a product inventor or first-time founder, the useful question is not simply “what types of intellectual property exist?” It is “what should I check before I start selling?” The answer will depend on the product, but the checklist below covers the issues that most commonly need attention before launch.

A single product can involve several different rights at the same time. The way it works may potentially be protected by a patent. Its appearance may be protected by a registered design. Its name or logo may be protected by a trade mark. Manufacturing know-how and unreleased technical information may depend on confidentiality. The contracts with the people who design or manufacture the product can determine who actually owns important parts of the IP.

PatProtect works with inventors and early-stage businesses to identify these issues before launch, when there is usually still time to put the protection in place rather than trying to repair the position afterwards.

1. Decide whether the invention needs a patent before you disclose it

If there is a new technical feature in the product, patent timing is usually the most urgent question. UK patent law generally requires the invention to be new. The UK Intellectual Property Office warns that an invention may no longer be patentable if it becomes public knowledge before the application is filed.

“Public disclosure” is wider than a first commercial sale. It can include putting the product on a website, demonstrating it at an exhibition, launching a crowdfunding campaign, posting technical details on social media, supplying unrestricted samples, or explaining the invention to a third party who is not under an obligation of confidence.

That does not mean the product must be completely finished before a patent application is filed. Patent applications are frequently filed while development continues. What matters is that the application adequately describes the invention that is being protected. Improvements developed later may need to be considered separately.

Practical check: before any public launch, ask whether the product contains a new technical solution that might be worth patenting. If it does, obtain advice before disclosure rather than after the launch date has been fixed.

2. Clear and protect the product name before spending heavily on the brand

A strong product name can become one of the most valuable parts of a business, but choosing a name is not the same as obtaining the legal right to use it. Before committing to packaging, a website, advertising, printed stock or a launch campaign, check whether the same or a confusingly similar trade mark is already registered for relevant goods or services.

Registering a company name or buying a domain name does not automatically give you trade mark rights. UKIPO guidance expressly distinguishes company and domain name registration from trade mark protection.

A trade mark application can usually be filed before the product goes on sale. Filing early can be particularly useful where the launch will involve significant expenditure, because discovering a serious brand conflict after packaging and advertising have been produced can be considerably more expensive than changing the name at an early stage.

Practical check: search and assess the intended product name and logo before the launch material is finalised, then consider whether a UK trade mark application should be filed.

3. Protect the appearance of the product, not only how it works

Many new products have valuable visual features even where the underlying technology is not patentable. A UK registered design can protect aspects of appearance such as shape, configuration, pattern, decoration or colour.

For launch planning, the safest approach is normally to consider design registration before public disclosure. UK registered design law does provide a 12-month grace period for certain disclosures made by the designer or resulting from the designer’s actions. That should not, however, be treated as a general reason to delay. Overseas design systems can differ, and the place and timing of first disclosure can also affect some unregistered design rights.

Registered design applications depend heavily on the illustrations filed. CAD images, line drawings or photographs should therefore be selected with care so that the filing reflects what is intended to be protected. If there are materially different versions of the product, more than one design application may be appropriate.

Practical check: before releasing photographs, CAD renders or the finished product publicly, decide which visual features are commercially important and whether they should be registered.

4. Use confidentiality while the product is still private

Before filing and launch, inventors often need to speak to manufacturers, engineers, investors, stockists, packaging designers and other advisers. Do not assume that every commercial discussion is automatically confidential.

UKIPO guidance recommends using a non-disclosure agreement where confidential ideas or inventions need to be shared. A useful NDA should do more than say that information is “confidential”. It should define what information is covered, the permitted purpose for which it may be used, who it may be shared with, and how long the confidentiality obligations continue.

Confidentiality is particularly important where a patent application has not yet been filed. It can also protect manufacturing know-how, supplier information, test results and other commercially valuable material that may never appear in a patent.

Practical check: know exactly what you are about to disclose, why the recipient needs it and what contractual obligation prevents them using or passing it on for another purpose.

5. Put the manufacturing relationship in writing before production starts

A manufacturer may need detailed CAD files, prototypes, tolerances, drawings, test data, tooling information and production know-how. That can make the manufacturing agreement almost as important as the purchase order.

The agreement should address who owns the IP that existed before the relationship, who owns new material produced during development, what happens to improvements suggested by the manufacturer, and what rights each party has to use the information after the relationship ends. It should also deal with confidentiality, subcontracting and access to the technical information.

Physical tooling deserves particular attention. If the inventor pays for moulds, dies, jigs or other tooling, the contract should make clear who owns them, where they will be held, whether the manufacturer can use them for anyone else, and what happens to them on termination.

For many products it will also be sensible for the wider manufacturing contract to deal with specifications, quality control, changes, rejected goods, regulatory requirements, delivery, termination and liability. These are contractual and commercial matters as well as IP issues, and specialist contractual advice may be needed.

An important point from current UK business guidance is that paying a contractor or supplier does not, by itself, guarantee ownership of IP created by that contractor. Where ownership matters, deal with it expressly in writing.

Practical check: do not wait until the first production run has been paid for before asking who owns the CAD, the tooling, the improvements or the manufacturing information.

6. Check that the business actually owns what it is about to launch

New products are rarely created by one person in complete isolation. A freelance product designer may have created CAD drawings. An engineer may have changed the mechanism. A branding agency may have produced the logo. A co-founder may have contributed to the invention. A manufacturer may have proposed an improvement.

Before launch, funding or licensing discussions, check the ownership chain. Where necessary, assignments or other agreements should be put in place so that the business that is commercialising the product has the rights it expects to have.

This is especially important for a start-up that may later seek investment. An investor examining the business will normally be much more comfortable with a clear chain of IP ownership than with an explanation that the paperwork is still being sorted out.

Practical check: list everyone who has contributed materially to the product, its technical development, its appearance and its branding, and check what agreements exist with each of them.

7. Sequence the launch rather than treating IP as a final administrative task

Good launch timing does not normally mean waiting until every patent or trade mark has been granted. A patent application can remain pending for years, and a new business cannot necessarily wait for grant before selling. The important distinction is between filing and grant.

For patents, the critical step is usually filing before non-confidential disclosure. For trade marks, the practical priority is often clearance before committing heavily to the brand, followed by filing at an appropriate early stage. For registered designs, filing before launch is usually the cleanest approach even though UK law provides a limited grace period for certain disclosures.

A sensible sequence for many product businesses is therefore: identify the product and brand; review patent and design protection; put confidentiality and supplier contracts in place; file the rights that should precede disclosure; and only then move into unrestricted marketing, crowdfunding, retailer presentations and public sale.

The exact order can differ from one product to another, but the central point is simple: once information has been made public, some opportunities cannot be recreated merely by filing later.

The PatProtect pre-launch checklist

• Have we identified any genuinely new technical feature that may justify a patent application?
• Has any potentially patentable information already been disclosed outside confidentiality?
• Have we searched the proposed product and business names for conflicting trade marks?
• Have we decided whether to file the trade mark before launch?
• Have we identified the visual features worth protecting by registered design?
• Have appropriate patent and design applications been filed before public disclosure where required?
• Are manufacturers, designers, engineers and other third parties under suitable confidentiality obligations?
• Does the manufacturing or supplier agreement state who owns existing IP, new IP, improvements, CAD files and tooling?
• Have all relevant contributors assigned the rights the business expects to own?
• Have we separated confidential pre-launch discussions from public marketing and crowdfunding?
• Are we clear which territories matter commercially, so overseas rights can be considered before deadlines are lost?

You do not necessarily need every possible IP right. The objective is to identify the rights that matter for this particular product and secure them at the point when they are most useful. PatProtect can help inventors and early-stage businesses review a product before launch, identify the main IP risks and prepare appropriate patent, design and trade mark filings where required.

Can I start selling before my patent is granted?

Usually, yes. A business does not normally need to wait for a patent to be granted before selling. The important timing issue is usually whether the patent application was filed before the invention was disclosed publicly. A pending application is very different from waiting for final grant.

Should I register my trade mark before I launch the product?

There is no general rule that a trade mark must be registered before the first sale, but it is sensible to clear the proposed name before investing heavily in the brand. Filing before or around launch can reduce uncertainty and establishes an application date.

Can I show my invention to a manufacturer before filing a patent?

Potentially, but only after considering confidentiality carefully. A manufacturer should not simply be assumed to owe confidentiality. An NDA or manufacturing agreement can restrict disclosure and use, but filing first may still be the safer approach where practical.

Can I register a product design after I have launched it?

UK registered design law contains a 12-month grace period for certain disclosures by the designer or resulting from the designer’s actions. However, relying on that period can create unnecessary risk, particularly where overseas protection may be wanted. Filing before launch is usually the cleaner strategy.

Does an NDA give me the same protection as a patent?

No. An NDA is a contractual confidentiality obligation against the people or organisations bound by it. A patent, if granted, can provide rights against third parties more generally within the relevant jurisdiction. The two forms of protection perform different functions.

Who owns improvements made by my manufacturer?

Do not assume the answer. Ownership can depend on the facts, the underlying law and, importantly, the contract. If improvements or new technical work may arise during manufacture, the agreement should deal expressly with ownership and permitted use.

If I paid for the CAD drawings and tooling, do I automatically own them?

Not necessarily. Payment does not automatically resolve ownership of intellectual property created by an outside contractor or supplier. Physical ownership of tooling and ownership of copyright or design rights in drawings can also be different issues. The contract should deal with them expressly.

Can PatProtect review my product before launch?

Yes. PatProtect is aimed at inventors and early-stage businesses and can help identify the patent, design, trade mark, confidentiality and ownership issues that should be considered before a product is launched.

Source references

Official UK guidance used in preparing this article (plain-text URLs):

https://www.gov.uk/intellectual-property-an-overview/protect-your-intellectual-property

https://www.gov.uk/patent-your-invention/before-you-apply

https://www.gov.uk/how-to-register-a-trade-mark

https://www.gov.uk/how-to-register-a-trade-mark/before-you-apply

https://www.gov.uk/register-a-design

https://www.gov.uk/guidance/designs-examination-practice/part-b-absolute-grounds-for-refusal

https://www.gov.uk/unregistered-designs