Patents, trademarks, and copyrights make my head spin. But, any good product manager or innovator needs to consider the intellectual property issues when developing a product. Consequently, I asked patent attorney Dan Brean of the Webb Law Firm in Pittsburgh, Pennsylvania, to help all of us Everyday Innovators navigate the IP issues with new product development. Dan is an experienced patent litigator and prosecutor, primarily working with mechanical, electrical, and software technologies, so he brings a good mix of hardware and software IP experience. He also teaches at the University of Pittsburgh school of law.
This interview is part of my continuing Design Thinking series as Dan contributed the “Intellectual Property Protection for Designs” chapter to the PDMA Essentials book, Design and Design Thinking.
Practices and Ideas for Product Managers, Developers, and Innovators
- We are wired to look at a situation, identify problems or shortcomings, and create product concepts to provide solutions. One of Dan’s early memories of creating a product concept is when he was 7 years old and noticed that car headlights don’t point where they are needed when making turns. He decided a turning headlight that turns as the wheels of the car do would be an improvement.
- When it comes to intellectual property protection, what you choose to do and not do has lasting ramifications– knowing the options and the timelines involved is important.
- What is the purpose of Intellectual Property protection and why does it exist? IP is something that is intangible – you can’t see, feel, touch, or smell it. As a legal concept, IP rights can make those intangible ideas in some sense ownable. It gives rights over the controlling and use of the ideas.
- What are “prior art” issues? This refers to the universe of public knowledge before the date your patent application is filed. Anything that happened before (prior) that contributed to the technology field (art) is considered prior art. Only ideas that are new and inventive (not obvious) can be rewarded patents. Consequently, being the first to file an invention is important.
- When moving through a traditional product pipeline that starts with several reasonable product concepts and eliminates the less promising ones as information is gained, when should IP actions be considered? It should be considered at all stages, but there is a trade-off. You want to get patent protection filed early for viable product concepts, but you can’t file before details of the invention are known. Considering prior art for the invention should be part of the considerations as the concept moves through the pipeline.
- What are the forms of IP protection and how do product managers know which ones they should consider?
- Utility patents are most common and cover the utilitarian value of a invention – something that performs a useful process.
- Design patents cover the ornamental appearance of a object or user interface – the aesthetic aspects of a design. Many inventions fall under utility patent and design patent protection.
- Trade secrets is anything that is kept confidential and has a commercial advantage to it. A famous example is the formula for Coca-Cola’s Coke beverage.
- Trademarks protect brand names or logos or other characteristics that specify a brand.
- Copyright protection is for artistic works.
- What is an example of a product concept going through the IP process? We discussed some type of eyeglass clip that can be worn on a shirt. Start with a patent search to identify whether prior art exists. See the links below for patent search tools. Even though you may not have seen a similar product on the market, there still may be prior art. Before filing a patent application, the non-obvious argument must be considered – that there is something significant about the invention. A utility patent would be filed to protect the function the eyeglass clip serves. A design patent could be considered if there is something unique about the aesthetics. Trademarks could be considered for the product’s name and logo.
- What are the time frames for filing patents? If you file a utility patent today it will probably be 2 to 3 years before the patent office even reviews it because of their backlog. Another year or two may be required to respond to the patents office questions. Expect about four years before the utility patent is awarded. Utility patents provide protection for 20 years. Design patents are quicker, typically issued in 12 to 18 months, and provide protection for 15 years.
- Dan is an IP lawyer at Webb Law.
- Google Patents search.
- US Patent and Trademark search.
“Genius is 1% inspiration and 99% perspiration.” -Thomas Edison
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Thank you for being an Everyday Innovator and learning with me from the successes and failures of product innovators, managers, and developers. If you enjoyed the discussion, help out a fellow product manager by sharing it using the social media buttons you see below.