The expansion of the wearable technology sector has been meteoric. Technology companies are investing huge resources to secure market share. What practical steps can you take to protect your brand, technology and ideas?

Patents protect your inventions, whether products or processes. Your invention must be new, inventive and with practical application.

Trade marks protect your brand and product names and symbols. Use ® if registered, TM if not.

Designs protect the visual appearance of your products and their components.

Copyright protects your literary, artistic, or musical material such as brochures, manuals, advert content and radio jingles. Keep good records and keep a dated copy of your work safe.

IP essentials for start ups and SMEs

IP is a must if your start up requires funding from a venture capitalist or Business Angel.

Developing a well balanced IP portfolio can give you the competitive edge and increase the market value of your business. Licensing, sale or commercialization of your products or services, protected with IP rights, can generate income for your SME. If you are using IP that belongs to others, it is important to consider the licensing or purchase opportunities available to you in order to avoid a dispute or litigation.

Timing is key and you should build IP action points into your business and project plans, and be prepared to allocate budget for IP.

Start of project

  • Are you free to use your idea or name? Check for existing patents, designs, trade marks and domain names.
  • Check contract terms with third parties (eg, confidentiality and ownership agreements).
  • Secure your own IP rights. File for patents, designs, trade marks and domain names. Patent applications must be filed before public disclosure so consider non-disclosure agreements with developers.

Ongoing and mid-project

  • Feature IP in project reviews.
  • Document development work and contributors (inventors, designers, etc).
  • Check further for existing third party IP while you can still potentially steer round it: use searches to clear significant design choices.
  • Again, review and secure your own IP rights.
  • Check that any existing IP rights you have do indeed correspond to the product you are developing.

Pre-launch of product

  • Do a quick re-run of clearance searches.
  • Check again that you have already filed for IP rights that correspond to the product you now intend to launch.

It is important to protect every aspect of your innovation, from the appearance of the product, the way in which it product operates, to any branding associated with it. A synergistic approach to IP will protect your market should competitors get too close, or should any copy-cat products appear.

Let us briefly consider how businesses can use IP to protect their products in an ever evolving technological and legal landscape. For further information or advice regarding a specific situation, please contact us at either of our UK offices (details overleaf).

Copyright

Copyright can last a long time (life plus seventy years), is free and is an automatic right that protects works of artistic craftsmanship, architecture, sculpture or engravings. However copyright is not a right that you should assume will fully protect your business on its own. In the world of 3D printing, for example, a fundamental catch is that while a design blueprint, such as a STL or AMF print file, may be protected by copyright, 3D objects are generally not protected by copyright in the UK.

Registered designs

In electronics, the distinctive appearance of a particular product or of a graphical user interface (GUI) is sometimes crucial to the success of that product. In the area of wearable technology, the appearance of a product will be, arguably, even more important. Manufacturers should therefore consider protecting this distinctive appearance using registered designs.

Registered designs protect the 'individual character' in the appearance of the whole or part of a product, arising for example from its shape, texture, materials or ornamentation, and don't require proof of copying. As a result this type of protection is likely to be the most effective tool available against unauthorised 3D reproductions of many types of consumer products, such as designer shoes or jewellery, for example.

Again, there are some exclusions - you cannot register a design whose appearance is solely dictated by technical function, and a registered design will not protect those features required to fit another product. So, for example, a smart watch strap will not be protected where it is shaped to connect to a charger, but any characteristic shaping of the strap itself will be protected.

Patents

Patents protect innovative products and methods independent of their appearance. Specifically, a patent protects the way in which a product solves a technical problem.

Given the rapid rise in complexity of products produced by 3D printers, the patent is becoming a very useful tool. There may be several patents that could be infringed to produce a functioning 3D printed product. These infringements would be easily detected from the blueprints, making policing the relevant patents quite straightforward. 3D printers can create things that have previously been impossible to build, so keep patents in mind when evaluating your designs, as they could easily be inventive.

In the field of wearable technology, there are a number of issues to consider. Although it is not possible to use patents to protect the appearance of a product (that is the purpose of registered designs), the wearable technology will usually include sensors measuring certain parameters, such as a pedometer in a Sony SmartBand or location of the user in a Nike SmartWatch. These sensors may be capable of patent protection if the sensors are improvements over known sensors. For example, if the sensors consume less battery power or are smaller than known sensors.

Many wearable technology devices, in use, communicate information with other connected devices, such as a smartphone. The smartphone runs a dedicated app, usually produced by the manufacturer, in order to communicate with the wearable device. Therefore, the manufacturer will wish to protect the wearable technology and the app separately. This will stop other manufacturers copying aspects of the app. However, in certain instances, it may not be possible to protect the app separately. In order for an app to be protected in its own right, the app must solve a technical problem. Examples of such technical problem include communicating with the wearable technology in a more efficient manner.

In the future, medical applications for invasive technology using sensors, nano-devices and chips will increase significantly. These devices should be patentable in their own right, however by moving technology into the human body companies face a possible challenge to the breadth of protection available to them. In Europe there are exclusions in the field of medical diagnosis and surgery that ensure that medical and veterinary practitioners can practice freely without worrying about patent infringement. These exclusions may impact on a company's ability to maximise its IP protection for these new and useful products. This is a complex subject where technology is highly likely to evolve faster than the law.

Trade marks

A particular brand name or logo used to market a product can be protected as a trade mark. Registered trade marks ensure that the goodwill and business reputation built up under that brand name or logo is protected in relation to specified goods or services.

Turning again to 3D printers, a brand owner may well have protected not only the name of their product, but also aspects of its appearance as a trade mark (which may exist alongside design right) which would be infringed by a copy even if the brand name was not made visible on the copy.

As wearable technology often spans a wearable device and an app, it will be important to ensure that trade mark protection is obtained for both aspects. For example, a wearable device may comprise a simplified or monochrome version of a corporate logo, compared to the version used by the companion app.

Cost effective strategies for protection

Many new and growing companies have tight budgets to generate, protect and commercialise their IP. Getting professional advice is invariably worthwhile, as there are many pitfalls for the uninitiated and for those innovating in areas that challenge traditional IP law, such as wearable and embedded technology, smart textiles and augmented reality.

We understand the need for commercially focused, timely and cost effective advice, tailored to your individual business needs.

General UK costs and timeframes

These may vary considerably depending on the complexity of the subject matter involved. For an indication of costs for your specific situation please contact us for more information.

Patent searches take a few weeks and can cost from around £2,000. Preparation and filing of an application can take two to four weeks and cost between £3,000 and £6,000. The patent grant procedure can take a few years. However, you do not need a granted patent to launch a product.

Trade mark clearance searches take a week and cost from around £600. Registration takes four to five months and costs £1,000 per category of goods/services (£200 for each extra category).

Design registration can take only a few days and costs around £500 (and less per application if more are filed at the same time).

Copyright is an automatic right and no formal application is needed.

Financial support for innovation

We are able to advise on government schemes such as:

Innovate UK's funding award competitions (see interact.innovateuk.org) and innovation vouchers for expert (IP) support and advice (see vouchers.innovateuk.org).

The European research and innovation programme Horizon 2020 innovation for SMEs programme (see https://ec.europa.eu/programmes/horizon2020).