Femtech start-ups – how to start thinking about intellectual property

Despite the fact that women have a number of health and physical issues that relate uniquely to them, including menstruation, pregnancy and menopause — all of which can have significant and long-lasting impacts — female health has traditionally been largely ignored by the world of innovation.

The female health taboo

Such topics have traditionally been considered unseemly or even taboo, as uncomfortable souls preferred to skirt around women’s issues rather than discuss them openly. 

Thankfully, the landscape is changing rapidly. Female-focused technology, aka femtech, is now a booming industry. Initially, those taking the first steps to drive the revolution around female health and wellbeing were largely female entrepreneurs with a passion for making change in a largely ignored and undeveloped sector. Now, in the space of a few years, the femtech industry includes publicly traded companies, as well as start-ups and SMEs. 

Intellectual Property considerations for femtech start-ups

Start-ups in any sector usually need to keep to a very tight budget initially, even if you gain funding through accelerator growth programmes or crowd-funding platforms. In such situations, it can be easy to overlook certain aspects of the business including intellectual property, or mark them down as something to revisit in the future when you’re more financially stable.

If you do decide not to consider intellectual property issues in the early stages, it should at least be an informed decision, rather than a bury-your-head-in-the-sand one. It’s really important to at least have an IP strategy in place, even if part of your plan is revisiting protection options at a later date. If you simply ignore IP issues, you can run into all sorts of future problems, particularly in sectors with significant levels of innovation and competition. You may be surprised to learn that some of the basic first steps can be taken easily, and on a limited budget.

To get you started, we’ve put some information together with specific relevance to femtech companies, together with five top tips to help you to formulate a basic IP strategy.

Types of Intellectual Property

There are many different types of ‘IP rights’, but the main ones to think about are:

• Patents, which relate to inventions
• Trade marks, which relate to brands
• Copyright, which relates to original ‘works’ (artistic, literary, dramatic or musical)
• Designs, which relate to the appearance of a product

IP rights provide protection for your innovation and creativity, and can help in securing investment. Patents, trade marks and designs are all potentially registrable rights. This means that you must apply for them, but once they’re granted you own a monopoly right in whatever it is that you’ve protected. Registered protection gives you the tools to ring-fence your business and keep competitors at a distance. IP rights can create new revenue streams (through licensing and/or royalties), add substantial value to your business and are very appealing to investors. Unregistered rights also exist, such as copyright, which arises automatically once a work is created. Certain trade marks and design rights can also apply automatically.

Basic Intellectual Property strategy

1. Identify your IP

As you’re creating a new brand or product for your femtech company, improving the function of an existing product or writing up company literature (including website copy), it’s very likely that you’re creating new IP.

Identifying your IP should be an integral and fixed part of your creative process. For example, in the development of a new kegel exercise product, the visual appearance of the product may have design protection options, the name you choose could be a trade mark, the way the product works might be eligible for patent protection, and the user manual could be protected by copyright.

If it’s not immediately obvious to you whether you have generated IP, it’s possible to conduct an IP audit to identify potential rights. This should be done by patent and trade mark attorneys and is a good way to obtain information on protection options that might be available. Funding for IP audits is often available, and we can provide further details of this on request.

A free alternative is the IP Healthcheck tool offered on the UK Intellectual Property Office (UKIPO) website. 

2. Protect yourself when discussing with others

It’s important when considering patent protection that details of your invention are kept confidential until a patent application is on file. If in doubt, don‘t disclose details of your invention without first consulting a patent attorney. If it’s essential that you discuss your invention with a third-party, you should consider using a non-disclosure agreement (NDA) to evidence that the discussions were held in confidence.

3. Check whether someone else already owns rights

If someone else already owns rights which conflict with what you’re doing (or planning to do), your activities could infringe their rights and result in legal action being taken against you. The outcome of this could be an injunction stopping you from continuing to infringe, you having to pay damages and legal costs to the other side (as well as your own) and the delivery and/or destruction of any infringing goods.

It’s possible to run trade mark, patent and design searches to reduce your likelihood of infringement. In reality, the cost to take a comprehensive approach to searching could render it unrealistic for start-ups with limited budgets. Lower-cost knockout searches, which may not reveal all of the risks but are still useful as an indicator of likely issues, can be a good alternative. Similarly, early stage ‘toe-in-the-water’ patent searches can be conducted at a relatively low cost to provide an early indication as to whether problematic patents may exist that could prevent your product launch.

There are tools that you can use yourself to search for earlier rights, including the UKIPO trade mark search tool and the Espacenet patent search tool. However, what constitutes an infringement of IP can be dictated by reams of case law, so we recommend that you always seek the opinion of a qualified person.

Whatever you decide to do, you should do it early to avoid unpleasant surprises. Being forced to make significant changes to your product once in manufacture, or completely rebrand following launch, can prove very costly. These costs can be avoided if you’re aware of potential issues at an early stage.

4. Consider protection options

Trade marks, patents and designs are all registrable rights. Registering IP generally provides much stronger protection than not registering.

Registered rights are territorial, so as a first step it’s usually necessary to identify the countries or territories where protection might be needed. We usually recommend considering the home market as a first step, which can give you around six to 12 months to develop the overseas strategy and spread the costs a little.

Costs involved in IP protection can vary, and admittedly can be high, so it’s worthwhile asking for detailed cost estimates from IP attorneys to establish the costs involved for the types of IP protection that might be relevant to you. Most firms will provide cost estimates free of charge. For most businesses, especially start-ups, seeking registered IP protection will often involve an exercise of balancing risk versus budget. An experienced patent or trade mark attorney should be able to advise on how to achieve the most effective protection within your budget.

For unregistered rights, including copyright, unregistered trade mark rights (enforceable in the UK through the law of passing-off) and unregistered design rights, you should keep detailed records of your creation of any works/brands/designs including who created them and when they were created (and proof of this). For unregistered trade marks in particular, you should keep records of your promotional activity of the brand, any third-party press articles, details of sales and turnover, copy invoices, examples of product packaging, advertisements and brochures. These can be useful types of evidence should you ever need to rely on unregistered rights in order to try to stop a competitor from treading on your toes.

5. Police and enforce

Finally, you should keep an eye on your competitors and the marketplace in general. If you feel that someone is coming too close to you, causing confusion, or attempting to benefit from your efforts, then you should consider options for taking action at as early a stage as possible.

Allowing others to infringe on your rights can have a detrimental effect on your ability to take action in the future, and on your business as a whole. For example, allowing a competitor to use a similar brand for the same type of product could lead customers to believe that both products come from you, which could affect your sales and reputation (especially if the competitor’s product is inferior). Furthermore, a similar brand can whittle away at the distinctiveness of your brand, ultimately affecting the customer’s perception of your brand and their ability to recognise it as indicating that the product originates from your company.

Hopefully this has given you some basic insight and pointers to start thinking about your intellectual property rights. We’re aware that IP is rarely straightforward, especially if you’re unsure what you’re doing, and we recommend that you always work with an IP attorney to receive professional advice that is tailored to your unique situation. In a fast-growing sector like femtech, it’s incredibly important to be aware of IP issues and know where you can turn to for help. Feel free to get in touch to find out more.