Dan Smith: Hi I am Dan Smith, a Director in the IP Team at Gowling WLG and today I am joined by my fellow Director, Matt Hervey. So Matt, why should designers consider IP?
Matt Hervey: All businesses should consider IP. It is what protects your market and what generates value. It is what distinguishes your company from another company, be it a name, an invention or a product design, and designers are creative people. They are constantly creating works worthy of design protection of value to their employers, to their clients, or to themselves.
Dan: And what basic steps should designers take when considering IP protection?
Matt: Designers should at the very least have an initial discussion with an IP specialist to explore if there is an idea that is protectable.
They have to be aware that the public disclosure can actually destroy the ability to protect some ideas, particularly if they are seeking patent protection.
So if there is an invention worthy of patent protection, they should make sure that they only make disclosures under a non-disclosure agreement.
You should also revisit the topic as you refine your design because in our experience, as your design gets better, your protection may actually become stronger.
Now many designers may feel that they do not have the funds to actually enforce their IP but that does not necessarily matter because owning IP may in itself create a perception of value in the eyes of potential investors. It may also act as a deterrent in any case.
Dan: And what are the threats?
Matt: The key threat is that you may infringe someone else's IP so, before you go too far with the product, you should do some basic freedom-to-operate research and that would be, at the very least, internet searches for your intended product name and some market research into what the competitors are doing.
You should also keep very thorough notes of your design process because, if anyone ever accuses you of infringing their design, you can then prove the independent process you took.
The other threat, particularly for a start-up, is that founders often fall out, so any start-up should ensure that its IP is owned by the company and that any IP generated by any employee or a contractor is automatically assigned to the company.