Planning IP protection – when and where?

Precise IP strategy is half the battle. It will help avoid problems and unnecessary costs. However, action must be taken at the right time and in the right place.

Trade marks – when?

As soon as possible, but don’t forget about trade mark searches and copyrights.

In most jurisdictions, the “first-to-file” principle applies, meaning whoever files first has priority.

This doesn’t necessarily mean, though, filing a trade mark application should be your very first step!

Before filing, before introducing a product or service to the market, and even earlier – before taking any preparatory steps towards entering the market (such as producing packaging or creating visualisations for your services on a website) – it is always advisable to conduct a registrability search.

Trademark clearance and protection

Trade mark registrability search makes it possible to assess a likelihood of obtaining registration and to identify the most significant obstacles. Such a search may reveal that the intended market name is already taken by another business, and entering the market under that name could lead to infringement, along with all associated consequences (including a court injunction prohibiting use of the mark, surrender of unjustified profits, or compensation for damage).

At this stage, it is equally important to ensure that, in case of figurative or word-figurative marks, copyright to the graphic design is properly secured. Otherwise, the designer could successfully seek invalidation of the trade mark right.

Thus, while it is generally best to protect a trade mark as early as possible, the application should be preceded by at least a registrability search and securing copyright in the graphic design of the mark.

To further minimise the risks associated with market entry, a “freedom-to-operate” analysis can also be carried out. This assessment examines the risk of infringing third-party rights not only by reviewing trade marks recorded in official IP registers, but also by considering unregistered signs used on the market and signs that may enjoy reputation.

Designs – when?

As soon as possible, but take into account limited duration of protection and rights of creators.

Industrial designs operate under somewhat different rules, as their protection depends, among other things, on the requirement of “novelty”. In this case, it is generally safer to file an application first and only then enter the market. There are, however, certain exceptions.

Design rights are granted only when the design is new, meaning it has not been made available to the public, for example by being placed on the market before the priority date, which is usually the filing date.

This doesn’t mean, however, that a design application must always be filed before market entry!

“Grace period” – safe disclosure of a design

In many jurisdictions (including Poland), a 12-month “grace period” is available, allowing the design to be disclosed before filing. This means you can introduce the product to the market, assess whether further investment is worthwhile, and then file for protection within 12 months of the first disclosure.

Keep in mind the grace period applies only to disclosures made by the designer, their legal successor, or a third party with the rights holder’s consent, or where the disclosure results from an abuse committed against the designer or their legal successor!

Protection of industrial designs – key principles

As with trade marks, before entering the market and filing a design application, it is necessary to secure copyright along with the right to obtain a design, which by default belongs to the designer.

Registrability searches for designs are advisable, but most IP offices do not examine substantive prerequisites; they grant protection once the formal requirements of the application are met. Compliance with substantive criteria such as “novelty” and “individual character” is usually assessed in invalidation proceedings.

Unlike trade mark rights – which may be renewed indefinitely for successive 10-year periods – design protection lasts for a maximum of 25 years and must be renewed every 5 years. This limited duration of protection should be taken into account when shaping a business strategy.

Inventions and utility designs – when?

As early as possible, but timing depends on R&D, patent searches, securing creators rights, and the limited duration of protection.

Protection of inventions and utility designs for technical solutions is usually preceded by time-consuming research and development. These projects typically require significant financial investment and coordinated action by several actors, including inventors, investors, and entities responsible for commercialising the technical solution.

As with designs, granting protection for inventions and utility designs depends, among other things, on the prerequisite of “novelty”. This means that the first public disclosure (for example, placing the product on the market) should occur only after filing for protection.

On the other hand, unlike designs, there is no 12-month grace period. The only exception is disclosure within six months before the filing date, but only if it was the result of an evident abuse against the applicant or their legal predecessor.

“Freedom-to-operate” analyses

As with trade marks, it is crucial to conduct a patentability search before filing. Given the substantial financial investment that typically accompanies R&D and the commercialisation of technical solutions, applicants often choose to carry out additional “freedom-to-operate” analyses to evaluate the risk of infringing third-party rights. In some cases, investors require such analyses to ensure smooth commercialisation of the invention.

Timing of filing

Before filing, the rights of the inventors must be settled. These rights may be transferred to another entity in accordance with the arrangements made between the parties involved in the development and commercialisation.

The filing date should be chosen with the limited duration of protection in mind: 20 years for patents and 10 years for utility designs rights (no possibility of extension above these periods), as well as considering the time needed for obtaining a patent – typically 3 to 5 years!

On the one hand, the timing of the application should depend on prior searches and securing the applicant’s rights to the invention; on the other, the technical solution should only be placed on the market after filing for protection. Coordinating and properly planning these actions usually requires significantly more organisational effort than in the case of other IP rights.

Where? It depends 🙂

The territorial scope of protection depends primarily on the adopted business strategy.

A natural starting point is the markets where goods or services are intended to be offered, but it is worthwhile to consider markets planned for future expansion as well.

One should bear in mind that IP rights are, in principle, territorial. This means that obtaining protection in several or a dozen countries generally requires separate applications in each of them.

There are, however, exceptional mechanisms allowing acquisition of a regional right through a single application. Examples include EU trade marks and designs, which have a unitary effect across the entire European Union.

Alternatively, it is possible to use international applications filed through WIPO, designating multiple territories within one filing. Unlike EU trade marks and designs, however, these procedures result in a bundle of national rights, rather than a single unified right.

For patents, a unitary patent has been available for over two years now, functioning in a manner similar to unitary EU trade marks. However, only 18 EU Member States have joined the unified patent system to date. The remaining states (including Poland) continue to use the traditional European patent system, which also results in a bundle of national rights.