“Many startups make the mistake of ignoring the value of non-patent intellectual property…. A company’s brand can be immensely valuable in the marketplace.”
Although it may seem like the name “startup” says it all, the reality for many inventors, engineers and companies is that it’s difficult to know where to start when what you have is just an idea for a product, a recently discovered process or an innovation. You may have the “million dollar idea,” but where do you start to move it from concept to market?
Step 1: Build Your Team
While startups may be selling wildly different products, or developing different processes or innovations, one thing most have in common is a similar starting point, and a limited budget. Product design, branding and identity are always necessary, and protecting your brand, innovations and products from competition is essential. But how do you allocate your limited resources while developing the best possible brand and product, and ensuring that your intellectual property is adequately protected?
The first step is to build your team as early as possible, and that means involving an intellectual property attorney and a product designer right from the start. Having them work closely together will save you money and time, and can also help you identify what you need to raise for capital. While the product design idea might be terrific, the IP attorney might also understand that it cannot be legally protected, or might run afoul of other’s IP rights and needs to be rethought. Or her experience may tell her that a brand name won’t translate in a different international market, or that a product cannot be marketed or protected there, and she can work with the design team to help make necessary changes. The product designer will be able to coordinate with the patent and trademark attorneys to be ready to pivot – or to change design before it’s even started based on legal parameters. Those experienced with startups understand that this isn’t a linear process – it’s more of a constantly evolving continuum, and having both the design and legal experts on board early is essential.
Step 2: Ask the Right Questions
Knowing the right questions to ask also saves time and much needed capital. If you are looking to hire IP attorneys and a product designer, these are the questions you’ll want to hear from them.
From a product design perspective, the following questions should be asked when a startup arrives with an idea or a prototype:
- How will it be sold?
- Is it scalable?
- What is the market for the product (and is there a market for it)?
- Who will buy it?
- Will the purchaser be the end user?
- How can we make the product stand out visually?
- Are you willing to switch strategies and pivot if necessary?
As an IP attorney working with both the client and product designer, these questions should also be answered early on:
- What was the motivation for the innovation?
- What is its “story?”
- What problems does the innovation or product solve – and how were those issues solved in the past?
- Has the innovator worked with anyone else, or told anyone else about it?
- In which markets will the product be sold?
- Who are the competitors?
- Has the startup sought funding, and if so, what issues has the company faced?
- What is the brand name associated with the product?
Step 3: Design and Legal Protection
Once these questions are answered and explored, the design and branding becomes more developed. At this stage, the attorneys can focus on whether the invention or product is patentable, and whether there are any blocking patents that could prevent freedom to operate. Answering essential questions early allows the patent attorneys to begin to work on a comprehensive patent application that can serve as a launching point for multiple patents during its lifetime. This is an agile approach that provides the startup the ability to pivot and shift gears when unplanned market forces come into play (such as competitors, investors, manufacturing challenges, etc.). A willingness to pivot is essential in order to obtain commercially meaningful protection for an innovation – and it often spurs innovation that makes the product truly unique.
From the design perspective, once the functionality and design have been locked in, the product designer will begin to refine the product and positioning materials, and will start the branding process, including naming and logo design. Having the designers and attorneys working together at this stage is crucial in order to keep the process moving. For example, the attorney would work with the branding team to ensure that the branding is clear from a freedom to operate perspective, and would then begin to seek protection for the brand and logo.
During the lifecycle of a typical startup, several different types of intellectual property protections may be sought, including:
- Utility patents, which protect the structural and functional aspects of a new or improved product or system. These are the most popular type of patent, and while they are significantly more expensive than design patents, they offer a broader scope of protection.
- Design patents, which cover the unique appearance of an item.
- Trademark protection, which can cover the corporate name as well as names, symbols, logos, and other design elements associated with the product.
- Trade secret protection – which, although it costs nothing, prevents access to the valuable secrets your business has worked hard to discover. Trade secrets can be protected via non-disclosure agreements, limiting access to those who “need to know,” and keeping manufacturing behind closed doors.
Your IP attorney will discuss other important considerations with you – including timing. For example, both utility and design patent protection can be lost if you disclose your idea before filing your application (in the United States, you have one year to file your application after public disclosure – but the same is not necessarily true in other countries). And because patent applications can take a while to work their way through the patent office and process, you may want to consider expediting the process if obtaining a patent early is necessary. Finally, conducting patentability searches and considering who invented the concepts (as not all who participated will be considered “inventors” legally) are important steps in protecting your product, process or system. All of this may seem daunting, which brings us back to the concept of involving IP and design experts early in what will hopefully be your successful journey from idea to market.
Step 4: Branding Considerations
Many startups make the mistake of ignoring the value of non-patent intellectual property. While patents can be incredibly valuable, patentability does not necessarily ensure that a company’s product is a good product or that it will sell well. A company’s brand can be immensely valuable in the marketplace.
Integral to branding are trademarks, which identify and distinguish a company’s products. A trademark can be a word, symbol, slogan, design, or any combination of these. You will want to choose a trademark that is reflective of your value proposition and that is distinctive, yet easy to remember, so that it builds a strong association between your mark and your products. Typically, the more unique, the stronger the mark; descriptive names, surnames, and geographic names should be avoided.
Importantly, registering a business name with your state does not create (or protect) your trademark rights. Startups should make sure their name and any logos are cleared for commercial use prior to commercial launch. Comprehensive trademark searches are an important first step in the trademark process and are strongly recommended in most, if not all, cases. If the terms and/or logos you are considering are available to use, you should try to register them as trademarks. In addition to preventing competitors from taking or using the company’s name (or your product names), trademarks help a young company create a unique and identifiable brand, building both visibility and value.
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