IP Considerations in New Product Development

Businesses of any size will create products with IP embedded in them, and considering the IP-related issues at the appropriate times in product development will benefit the business.  There are many different intellectual property asset classes which might be considered or created during these processes, both in terms of evolutionary line extension or new platform development – these include patentstrademarkscopyright and trade secrets.  The legal issues and associated fact gathering and decisions can be grouped into a number of headings, as follows:

  1. Avoidance:  are there any third party intellectual property rights that you might encroach upon or infringe with your proposed development, and if so can they be avoided;
  2. Clearance:  is the intellectual property aspect of the asset you are creating protectible, pursuant to any legislative IP schemes; and
  3. Protection: if there are protectible IP aspects of the project is there a wish to do it, andwhat is the timeline and plan for doing so.

Keeping it Under Wraps:

One IP-related concern which should be kept top of mind in product development is the importance of confidentiality.  It is best to avoid public disclosure of new ideas until final decisions around patenting and other IP issues have been made, so as to not negatively impact the patentability of the new product or process [international patent laws for example, in varying degrees, prohibit the valid patenting of inventions which have been disclosed to the public in advance of patent filing]   As well as the need for appropriately timed confidentiality around projects in their earlier stages, if IP protection for a particular project relies in whole or in part on trade secret protection, it will be necessary to document and maintain long term confidentiality around the ideas or information in question.

In addition to keeping the actual product prototyping or development process under wraps, it is important to remember to consider using non-disclosure agreements to cover external product testing and other third party involvement in product development projects, to minimize the triggering of public disclosure timeframes and otherwise minimize the possibility of third party misappropriation of your IP.

Understanding the Playing Field:

IP searches of various types can be used for many purposes, including IP clearance and even simply for competitive market assessment and technical landscape awareness.  You can use patent searches and other similar information to identify other companies working in a technical field, or who might be marketplace competitors.  Sometimes it might even be the case that you simply want to see the work of others to catalyze your technical development work, subject to avoidance of infringement of third party IP rights.  Building an IP searching step into the appropriate spot in your product development workflow can serve many purposes, and is highly recommended.

Defensive IP Considerations:

A first group of specific IP questions which can be asked and answered in the course of product development relate to “defensive” strategy considerations.  For example, are there third party patents or other IP rights which might be infringed by your new product – and if so, is it possible to avoid them or how will those questions be resolved.  When it comes to branding and marketing questions, it is also desirable to ascertain if there is the possibility of trademark infringement by your product if the desired name or trademark is used.  Consideration of defensive issues such as these is a step best installed early in the ideation process, between conceptualization and finalization of ideas, as that is the ideal time to make adjustments if necessary to avoid IP legal hurdles which might arise.

Offensive IP Considerations:

Another group of IP questions and opportunities which arise for consideration can be considered as more “offensive” in orientation.  Where defensive IP issues center around clearance and freedom to operate awareness vis-a-vis third party rights, once it is determined that there is a clear, or at least an understood, path through the existing competitive IP landscape, the next set of questions centers around whether or not there are protection or exclusionary opportunities which exist that you may wish to take advantage of.  For example, is the new technology something that could be enhanced in value by seeking to patent certain aspects of its functionality?  Will you seek to protect the trademarks or brands developed?  Is it necessary to inventory and properly protect new trade secrets or confidential business information of your business related to the product or service offering?

If a decision is made to seek to protect the IP rights in one or more aspects of the new product development, it will also be desirable to budget the economic resources and timeline in the overall business plan to ensure smooth coordination of your IP strategy with market entry.

When to Conduct IP Diligence in the New Product Development Process:

If your company conducts new product development on an ad hoc basis, I would encourage you to consider looking at an IP diligence checklist  before a final go/no-go decision has been rendered on other aspects of the process.  In a more institutionalized ideation process, it is important to consider the appropriate gate points in your process at which to insert IP decision point.

My suggestion is that the two groupings of IP decisions, related to defensive and offensive IP clearance outlined above, can logically be attached at two different points in the process:

  • Searching and defensive IP clearance issues:  I suggest it is appropriate to consider clearance and freedom to operate issues early in the ideation process, before a development path is solidified.  If there is a competitive patent blocking a development, or which might at the least shape the approach taken to the product development path, it is better to know this as soon as possible in the process rather than after a significant number of cascading decisions are made behind the initial development.  This will aid in minimizing wasted effort where IP hurdles exist, as well as creating maximum business opportunity and catalyst in the remainder of the new product development process by gathering in competitive IP information as soon as possible; and
  • Offensive IP protection considerations:  Considering the creation or existence of your own proprietary IP assets are questions which it actually makes some sense to consider a bit later in the process once a rough technical or product path is known and the decision process is moving past technical feasibility into marketing and production planning.  Opportunities for exclusionary or protective measures can be considered early in the process but are most fully fleshed out when the new product idea is reasonably complete.

Wherever or however you decide to consider IP issues in your new product development process, it will deepen the decision-making context and quality of your results.