Securing a dominant market position for a niche product manufacturer.

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Our client, a small start up company, had a director who had been previously involved in an earlier small company. The business of both companies was the manufacture and sale of waste containers for hospitals. The two companies were each wanting to achieve dominance for a niche product.

Originally, our client company's director had made an original design, before either company was set up. Our client's director had been closely involved in the earlier company as well as his new company. The intellectual property position concerning designs was complicated, due to the director's employment history.

An initial meeting was held to establish on a time line, the different product versions and the rights subsisting in each version. The competitor company had filed an international patent application, which had not yet resulted in any granted patent protection. However, our client had a registered Community design, as well as UK design rights in his original design, which was made before involvement in either of the companies.

It was quickly established that all subsequent container designs were evolved from our client's managing director's original design, which was made before his involvement in either of the companies. Consequently all subsequent designs were derivative from that original master design.

Unfortunately, since the original design was made over three years ago, our client's unregistered Community design had now expired, meaning that his unregistered rights throughout the community in the original design version had now expired. However, our client had UK design right in the original version, being well within the term of 10 years from first publication. Since the original design was still less than 5 years old, the UK design rights were still exclusive, meaning that our client's managing director had the exclusive rights on the design of the product in the UK, irrespective of any later variations of the design made by either company.

It was then a question of making sure that our client company had the rights to the original design. A transfer document between our client's managing director and his new company was created and completed, transferring the design rights to our client company. Our client company was then in a position to control the UK market using the design right in the original earliest design of the container.

Additionally, since our client's managing director designed the container prior to the competitor company filing their international patent application, we also advised our client to commence an entitlement action in respect of the competitor's patent application. Our client was the original inventor of the container and had never assigned the rights in the invention over to either company. Even though our client had never filed an international patent application for their container product, since our client's managing director was the original inventor of the patent application of the competitor company, then our client was in a position to claim the international patent rights by virtue of a transfer of the invention from their managing director, in addition to controlling the product in the UK by virtue of the transfer of the original UK unregistered design right.

In this instance, Franks & Co successfully leveraged our client's position into a controlling position in the UK and internationally for a niche container product, by tracing the product back to its origin and establishing that our client's managing director was the original designer and inventor of the earliest container product, from which all subsequent container variations derived.

Additionally, our client already had a registered Community design for a variation on the product. A further variation was also under consideration. We advised our client to file subsequent registered Community designs for all future variants in order to protect each variant of the design as it was created, and over time build up a portfolio of registered design rights on the subsequent variants of the container product.

In the short video below, European Patent and Trade Mark Attorney Dr Robert Franks talks about the management of portfolios of registered design rights.