Early stage patent strategy considerations for femtech start-ups

Maisy Leung, associate at EIP and Rosie McDowell, associate at EIP, take you through the legal implications that entrepreneurs need to consider when bringing their product to market.

The ‘femtech’ industry is expected to increase in value to $60 billion by 2027. This growth is driven primarily by start-ups owned and run by innovative women, who no longer feel the need to spare blushes, or quietly endure discomfort, leaks, and pain.   

Like all start-ups relying on technical innovation, intellectual property (IP), and especially patents, should be a cornerstone of the femtech business model. 

Start-ups in any sector usually need to keep to a very tight budget initially. Under these circumstances, it can be easy to label IP as something to begin thinking about when you’re more financially stable. However, the importance of having a strategy in place from the outset cannot be overstated, even if the strategy includes seeking protection at a later date. Below outlines five considerations relevant to femtech start-ups formulating an IP strategy.

1. Check whether someone else already owns relevant rights

Firstly, you must check that what you plan to do isn’t already covered by someone else’s IP. Once a basic concept is in place, commissioning an early landscape search can mean you avoid having to make costly revisions at a later stage of product development. In a worst-case scenario, a competitor could use their rights to prevent you launching your product.

The cost of comprehensive ‘freedom-to-operate’ searching could be unrealistic for start-ups with limited budgets. However, early stage ‘toe-in-the-water’ patent searches can be relatively low cost and provide an early indication as to whether problematic patents exist. There are also tools that you can use yourself to search for earlier rights, including the Espacenet patent search tool. However, it’s important to be aware that what constitutes an infringement can be complicated; so, do contact a patent attorney to provide a final opinion. Whatever you decide to do, you should do it early to avoid unpleasant surprises.  

2. Identify your IP

Identifying your IP should be an integral part of your creative process. Whether you’re creating a new brand or product for your femtech company, improving the function of an existing product, developing an app, or company website, it’s likely that you’re creating new IP. For example, in the development of a new pelvic floor exercising product, the way the product works could be protected using a patent; its visual appearance could be eligible for protection using design rights and the name you choose could be a trademark.

3. Check you can patent your idea

The basic requirements for patentability are that the concept is new and inventive, which can be quite complicated. Something which often catches start-ups out is that there does not need to be a similar product on the market for an idea to lack novelty. It’s enough that the idea is described in a publication, no matter how old or difficult to find that publication is. To confirm that an idea is new, a novelty search can often be performed for well under £1000.

Further, there are some product-types common in this sector which can be excluded from patentability. If your idea entails a method of diagnosis performed on the body; this can be excluded from patentability in some jurisdictions. Also, if your product is a piece of software or app, this may not be directly protectable using a patent. However, don’t rule out the possibility of protection in these circumstances; have a conversation with a patent attorney, and they will explain which aspects of your idea could be patentable. Many are happy to give such initial guidance for low cost, or for free.

4. Keep it quiet

If you are considering patent protection, it’s important that your invention remains confidential until an application is filed. This is especially important if the essence of your invention can be easily demonstrated, such as may be the case for an improved feminine hygiene product. If it’s essential that you discuss your invention with someone, you should consider using a non-disclosure agreement (NDA). If in doubt, don’t disclose details of your invention without first consulting a patent attorney.

5. Police your rights 

Finally, you should keep an eye on your competitors and the marketplace in general. If you feel that someone is 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 act in the future and on your business.