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How to Bring a New Product to Market

Written by: Patrick Duffy Richards

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Intellectual Property Patent Infringement

Posted over 2 years ago. 0 helpful votes, 0 comments

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Contact a Patent Lawyer

Intellectual property matters, particularly patent related matters, are often exceptionally technical and complex. Anytime your business encounters intellectual property issues you should consult with a qualified attorney. This guide is intended to help you understand the issues at play and the steps that will be taken, but this guide is no substitute for qualified counsel.

Provide Your Lawyer with a Complete Description of the Product

The following steps each depend on the quality of the information you provide to your lawyer regarding your product. Given a clear and complete description of your product, focusing particularly on (1) the differences between your product and what exists in the market and (2) the competitive advantage you'll gain with your new product, your attorney will be able to accurately assess the degree of risk of infringing existing patents and identify your patentable subject matter. Your attorney may have a specific invention disclosure form you can use to collect your information. Regardless of how the information is collected and organized, the best disclosures include a combination of written description and drawings. While it is hard to provide too much useful information, as the client you should never feel overwhelmed or have to create information that doesn't already exist in some form. Just get what you have to your attorney and together you can build from there.

Request a Patent Clearance Search

Once you have communicated a clear description of your product, your attorney may conduct a clearance search. Your attorney may rely on a third party that specializes in patent searching for the search. The purpose of the clearance search is to find any existing patents that may impact your ability to bring your product to market. Depending on how crowded your area of technology is, the search results may include a considerable number of patents for review.

Receive a Freedom to Practice Opinion

After you receive the clearance search results, your attorney may provide you with a freedom to practice opinion. The freedom to practice opinion will assess the level of business risk involved in bringing your product to market by comparing the identified patents to your product. The opinion may provide you with a brief description of how your product avoids infringing each of the identified patents. Assuming the search results do not include any patents that will block your product from the market, it is time to assess the patentability of your invention.

Assess the Patentability of the Inventive Aspects of the Product

Having reviewed your product description and the identified patents, your attorney will assess the patentability of your invention, either in part or as a whole. Any inventive aspects of your product that are new (novel) and not obvious may be protectable. You don't need a patent to bring your product to market, but an effective patent can help you secure your market share and keep your competitors from being able to ride on your coat tails.

File a Patent Application to Protect Your Invention

Utility patents protect the function of your invention, be it a mechanical or electrical device, a chemical composition, an industrial process or a computer program. Design patents protect the ornamental appearance of an article. Provisional patent applications secure your right to protect your invention, while allowing you to postpone the bulk of your patent investment an additional year. Your patent attorney will help you determine whether to file a provisional patent application, a utility patent application, a design patent application and whether to pursue protection internationally in addition to in the US. The key at this stage is for you, the client, to help your attorney assess the value of patent protection to your business. You should determine whether the costs involved in the patent process justify the potential benefits. Specifically, whether you will be able to leverage your patent for a competitive advantage, licensing or sales that will bring you profit.