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Bring the Product to Market: Look before You Leap

From the initial concept or flash of inspiration of an idea, through prototype developing, testing and final production design, much work and effort is involved. Simultaneously with determining the best form of end product or service to offer, a small business owner or inventor must also make investigations about the protectability of the idea, use appropriate contracts to maintain control over the product and the service and file appropriate applications to prevent all the inventor's hard work from being appropriated by larger, better financed competitors.

Once all of the background work is done, and the product is identified as being commercially viable and manufacturing or marketing is ready to begin, there is one last risk factor analysis that needs to be made. And that check is to ensure that there are no infringement problems which are likely to occur upon product or service launch. Nothing is more devastating to a small business than to receive a cease and desist letter complaining that the new product or service infringes upon another party's rights. Therefore, it is often advisable, in addition to performing a preliminary patentability search at the beginning of the process, to meet with your advisor to review the status of the project prior to beginning marketing.

One of the issues to check is to make sure that the product being sold is the same as what is covered in any patent applications that have been filed. Have new developments been made which should be covered in a fresh application?

Another issue is to decide whether to perform a pre-launch clearance search to ensure that no patent rights will be infringed when the product is launched. The longer the time between the patentability search and product launch, the more important this clearance search is. Many more patents may have issued, which need to be considered.

An infringement or clearance search is a different type of search from a patentability search. Whereas a patentability search is interested in only whether or not the same or similar idea has been previously disclosed in a printed patent, no matter how old, an infringement search is only concerned with patents which are still in force. Under current legislation, patents last generally 20 years from their filing dates. Thus, a patent clearance search focuses exclusively on patents which are in force.

The patent clearance search will also focus more particularly on what scope of protection is claimed in the prior patents, rather than the degree of similarity between the overall concepts. Sometimes it turns out that patents which appear to have particular limitations are claimed broadly, and the patent coverage extends more broadly than the actual structure of the competitor's product in the market place. This is the type of circumstance which can give rise to a patent infringement claim.

Another important issue is to review the marketing material. Are there trade names that have been chosen, and which have not been searched or cleared for use yet? Are the trademarks property identified and used in the correct way? Are the copyright and trademark notices correct and accurate? Do any third party marks appear and does this create any problems?

Considering the investment that is typically made in production, tooling and marketing, finance and the other aspects of bringing a new product or service to the market, conducting a pre-market risk factor analysis is an essential risk management technique for any business, and particularly important for small businesses.

If you have any questions about how to conduct a pre-market risk factor analysis, please consult your intellectual property advisor.

James Nenniger is a founding partner of the firm of Piasetzki Nenniger Kvas LLP, Barristers & Solicitors, Patent and Trademark Agents, a firm that restricts its practice to patents, copyrights, trademarks, industrial designs and related causes. Piasetzki Nenniger Kvas LLP is located in Toronto, Canada.