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 market feedback.
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 development.
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 service.