"The quality, not the
longevity, of one's life is what is important" Martin
Luther King Jr.
The structure of an IP portfolio depends upon how long a product
or the organisation is expected to be in the market.
Some products such as fashion or novelty items only have a short
market life - say a couple of years or less. In this situation, the
focus is on securing the market quickly, rather than trying to
obtain formal intellectual property protection. Nevertheless, a
well placed design application or three-dimensional shape trade
mark application (in countries that permit shape registrations) may
deter or at least slow imitators.
One thing to note for the fashion/design industries in
particular is that while it may not be worthwhile to register
short-lived designs, you may create something which could become a
classic. The fact that you must file a design application before
testing the market to preserve the novelty of the design, means you
need to predict the 'classic design' future success without
A tactic which can be used is to file a deterrent application in
a Paris convention country, to buy six months to explore the
market. If the product proves its commercial viability and looks to
have longevity, then provided further foreign applications (in
convention countries) are filed within six months of the first
application, then the novelty of the design will be preserved and
valid design registrations obtained. However, if the product does
not live up to your expectations, the initial application can be
discontinued once the market life has expired.
Usually there will be an overriding brand under which a product
will be marketed. This brand is likely to be long term and so trade
mark registration should be sought for that brand.
If you are intending on exiting your business via trade sale or
IPO, then a large impressive IP portfolio can be very useful to
showcase the IP within your business and to illustrate to
purchasers/investors potential opportunities. The portfolio may
comprise a number of patent, design and trade mark applications.
The timing of the filing of these applications can be coordinated
so that you are not committed to completing the applications before
the actual sale – thus avoiding major costs .
That said, when I am analysing IP portfolios for clients, I tend
to consider the age of the IP. A portfolio with many old registered
rights but few new ones can indicate that development has stagnated
within an organization. Many new applications without old existing
rights can raise concerns about track record, sustainability or
ability to cross the concept to market gap.
Lastly, if a product is intended to be in the market for a long
period of time, then a selective IP management process is required
that is mindful of budget. This also needs to accommodate expansion
plans of an organisation in terms of product and market
As always, be sure to communicate to your IP strategist the
expected longevity of your product so that they can construct an
appropriate IP portfolio to maximise your opportunities.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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