Question: I am the founder of a kids entertainment company. Our creative team designed a new product - a game - which has become increasingly popular and is driving sales. We have been advised to patent the game as soon as possible. This seems a lengthy and expensive process. Is it too risky just to register the design of the product instead?

Answer: Far from being a risky option, design registrations may be your best option.

The best way to protect a product depends on where the innovations lie (e.g. function or appearance) as well as on your available budget and the expected product lifetime.  Patents are generally more expensive than designs, but a valuable patent can still be obtained on a budget.  Also, IP costs can be justified by their value as business assets or more directly through tax schemes such as the UK's Patent Box. 

As you are already selling the product, patent protection will probably not be available in many countries (including the UK and most of Europe).  Some countries (e.g. the US) have a grace period which may mean that patent protection is still available. 

Grace periods are not universally available for registered designs, but they are more common.  Notably the European Community design system has a 12 month grace period.  European design registrations can be obtained quickly and provide protection for the appearance of the product across the whole of the EU for a fraction of the cost of a patent. You can also file multiple designs in a single application with reduced costs for the additional designs.

There are some complex issues here so I recommend that you talk to a patent attorney to discuss which options are available to you and whether a useful scope of protection can be obtained at an acceptable cost.  He or she can also advise about other rights including unregistered design rights, utility models and copyright.

First published in the Financial Times, May 2014