Think fast! Don’t risk not protecting your ideas

Robert Carpmael
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It's a true thrill to have a hallelujah moment, when, suddenly, the penny drops and you work out how to do something in a more efficient manner.

Alternatively, it might be an idea for a new product, or a repurposing of a device for doing something new. But what do you do next? Write down notes? Build a prototype? Shelve it for later?

All these are fine, but at some point, you will want to evaluate whether to move forward with it, and consider whether there is a likely market for it.

Mum’s the word

If the evaluation proves successful, you will ultimately want to disclose the idea to friends, peers or customers.

But can this be done?

This question is commonly a late consideration, but one where people frequently fall down. Many a great idea gets spoiled through prior disclosure during the evaluation phase; you can only get valid patent protection for a patentable invention in Europe if you file your patent application before the invention is publicly disclosed.

Discussing a work-related invention with a work colleague is usually going to be fine, as there is likely to be implied confidentiality.

For non-work related inventions, however, you need to keep it secret for a bit longer. Therefore, do not post your idea on a website. Do not test the prototype in a public area, or have members of the public, including friends or clients, into areas where the invention can be seen or understood. Instead, you should first explore whether pursuing a patent application for it would be worthwhile.

Patent pending

Evaluating patentability is a complex process. Start by considering whether or not the product is actually new, or if it already exists in a similar form. If you then decide that you want to commit to protecting it, get in touch with your patent attorney. They can assist with the evaluation, including obtaining a prior art search if needed – often helpful – especially for unfamiliar technological areas. They can then also proceed with the process of filing any required applications.

You may also want to consider putting in place a non-disclosure agreement (NDA) between you and anyone else that needs to be involved in the evaluation. Why? Because disclosures to them could otherwise be considered to be a public disclosure.

What’s in a name?

There are other considerations too – have you got a name for it? Could that name be protected with a trade mark registration? Furthermore, is its appearance potentially valuable? If so, it might be worthwhile considering design right protection, either registered or unregistered.

What if it is already disclosed? Sadly the door will have already closed on European patents, but what about other markets? Don’t forget US interest. There are grace periods for patents in the US that could be utilised. A grace period also enables registered designs to be filed in Europe, but be quick – they only last 12 months.

Don’t stall

Protecting the trade name can also remain an option past a prior disclosure.

Considering protection early is to be recommended. It keeps important options open, like patents, and with wider protection there can be more routes to fend off any competitors, and more opportunities to licence your exclusive rights to third parties, thus increasing revenue opportunities.

Investors are also more likely to be interested in a project where they can see potential protection for their investment, such as patents, trademarks and registered designs.

So, be brave. Evaluate your ideas and see if you have got what it takes to be the next great success story.

Robert Carpmael is a patent attorney and partner at Marks & Clerk.

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