United States: Before You Unveil That New Product At The Big Trade Show

The biggest trade show of the year is just around the corner, and you can hardly wait to unveil your company's newest, most exciting, most innovative product yet. Your engineers and designers have worked all year to perfect it. Your marketing department has developed the perfect messaging for it. And your sales folks are chomping at the bit to start selling it. This product is a game-changer, a category killer, perhaps even the future of your company. So obviously you're not leaving anything to chance. Or are you?

Even the most sophisticated companies often overlook intellectual property (IP) issues in the frantic months and weeks leading up to a big product launch. Here, we will highlight five basic IP issues that every company should consider before unveiling a new, innovative product at a trade show.

Utility Patent Protection

There are two types of patents in the United States—utility patents and design patents. A utility patent protects the functional aspects of an invention and (in most cases) has a term of 20 years from the filing date of the application. To be entitled to a utility patent, an invention must be novel and nonobvious, which means it must be meaningfully different than what came before it. Importantly, even subtle differences or small technical changes can constitute a patentable invention, as long as these differences are meaningful. So it is critical to consult a patent professional to determine what, if anything, might be patentable in your new product.

But what if you don't have time to do a thorough patentability analysis? After all, the big trade show is just weeks away! This is where a "provisional" patent application can be a lifesaver. A provisional application is a special type of patent application that acts as a placeholder for up to one year, essentially keeping your foot in the door of the Patent Office until you are ready to file a more formal application. It is still advisable to consult a patent professional before filing a provisional patent application, but because the process is less formal and the application itself is not examined by the Patent Office, the process is generally quicker and less expensive than filing a "nonprovisional" application. There are many advantages to filing a provisional patent application, most of which are beyond the scope of this article. Suffice it to say that many companies use provisional applications to buy time (up to a year) and to ensure that any potential inventions are protected before they are revealed to the public.

An important thing to understand about the patent process is the concept of "prior art." You cannot obtain a patent for any invention—even one that you developed on your own and at great expense—if that same invention was already in the prior art, i.e., in the virtual storehouse of all publicly available documents and knowledge that came before it. Whenever you unveil a new product at a trade show, you are essentially adding to this storehouse of "prior art," which can have important legal ramifications. In the United States, because of a unique provision in our patent laws, you can seek patent protection for a new product within one year of its public introduction unless a third party independently develops and applies for protection of the same invention. But in most of the rest of the world—including most major markets in Europe and some countries in Asia—you cannot seek patent protection for an invention that was publicly revealed before a patent application was filed. Thus, if you choose to unveil a new, innovative product at a U.S. trade show without first filing a patent application (either provisional or nonprovisional), you may be forfeiting patent rights in many worldwide markets. With the help of a qualified patent professional, you can minimize this risk by filing strategic provisional and/or nonprovisional patent applications before the trade show.

Design Patent Protection

Whereas a utility patent protects the way a product works, a design patent protects the way it looks. Specifically, a design patent protects the ornamental or stylistic elements of a product, rather than its utilitarian aspects. The term of a design patent is 15 years from issue, which is shorter than the term of a utility patent. The scope of protection is also narrower—a design patent only prevents the sale of a nearly identical ornamental design. Nevertheless, in recent years, design patents have become increasingly popular and important as companies like Apple have demonstrated their effectiveness in preventing competitors from copying the essential "look and feel" of a commercially successful product. Design patent protection can also be an important adjunct to utility patent protection, ensuring that competitors are kept as far away as possible from the distinguishing characteristics of your product—both functional and aesthetic.

Just like utility patents, design patents cannot cover what was already known. Thus, it is important to be aware of the prior art and to understand that revealing a novel ornamental design at a trade show has the same legal implications as revealing a new invention. Although the United States has a one-year grace period for such disclosures, it is still better (for a variety of reasons) to file for design patent protection before revealing that design to the public. The good news is that, compared to a utility patent application, a design patent application is relatively easier and less costly to prepare and file.

Trademark Protection

Trademarks provide you the ability to prevent others in the same industry from naming or identifying their products with the same name or identifying features as your products. Although state law and common law provide some basic trademark protection in certain circumstances without having to file any government paperwork, it is always advisable to seek federal trademark protection for any mark or characteristic that you believe distinguishes your product from those of your competitors. With the assistance of qualified trademark counsel, you can easily search the federal trademark database to determine if the mark you intend to use is still available. Obviously, it is wise to do this before deciding on or introducing any new brand name, logo, or advertising tagline into the marketplace. You certainly do not want to introduce an exciting new brand at the biggest trade show of the year, only to learn that the same mark has already been registered by another company for use with similar products.

By the same token, if you intend to invest precious marketing dollars into developing a unique brand identification for your product, you will want to ensure that the brand has the strongest trademark protection possible. And that means federal registration of the mark with the U.S. Patent & Trademark Office. Again, the good news is that federally registering a trademark is relatively inexpensive and straightforward, at least compared to obtaining a patent. So there is no real excuse for not pursuing federal trademark protection for your important brands.

Freedom to Operate

Just as you want to prevent your competitors from copying your new innovations, your unique designs, and your trademarks, your competitors are just as concerned with protecting their IP. It is not uncommon to see competitors (and sometimes their IP attorneys) wandering around your trade show display, inspecting your products with interest. Sure, they may just be admiring your newest product, but they may also be assessing whether it infringes any of their patents.

If you have any concerns whatsoever that your new design may infringe a competitor's patent, it is always advisable to consult IP counsel beforehand. Counsel can properly investigate any potential infringement and give you sound legal guidance about how to proceed. Consulting with counsel beforehand also has certain legal advantages in the event a competitor later sues you for infringement. As the adage goes, an ounce of prevention is worth a pound of cure when it comes to IP infringement.

Trade Show IP Clauses

Many trade shows require that you enter into a contract before being permitted to participate as a vendor, and many such contracts have IP clauses. If you have signed such a contract, you should take a few minutes before the show to review any applicable IP clauses. Often, these clauses outline specific procedures that must be followed in the event an IP dispute arises on the trade show floor. A typical requirement is that any such disputes be brought before a special trade show arbitrator before any formal legal action is taken. Just as it is important to understand the laws of any jurisdiction where you do business, it is equally important to understand how IP issues will be handled at a trade show in which you will be participating. Knowing the rules will help eliminate surprises and make you better prepared to handle IP skirmishes that arise during the show.

Along these lines, it is also important that you be prepared for the worst. When it comes to IP at a trade show, the "worst" is typically when a competitor files a lawsuit against your company in the local U.S. district court, seeking a temporary restraining order (TRO) that will authorize law enforcement to immediately seize your products and all advertising materials associated with them. These proceedings move very quickly and often with little notice. Therefore, it is prudent to have IP counsel already identified in advance, so you know exactly whom to call the moment you get notice that a TRO proceeding is underway. Every hour counts in these situations, so it is helpful to have your IP counsel on speed dial.

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.

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Events from this Firm
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The program will consider arguments that have worked to avoid a finding of inequitable conduct or unclean hands and those that have not been successful.

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As part of Strafford Publications’ webinar series, Finnegan partners Shana Cyr and Barbara Rudolph will discuss best practices for patent counsel navigating the 30-month stay in Hatch-Waxman Act litigation.

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Finnegan’s 2018 webinar series addresses challenges across the IP landscape in the United States. The series starts with one of the fundamentals—proving or disproving obviousness. The panelists will address what works and what doesn’t before U.S. Patent and Trademark Office (USPTO) examiners, before the Patent Trial and Appeal Board (PTAB), and before the courts.

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