Patent Protection for Innovation
Universal Waterproof Camera Case – A Big Hit in Europe and US
Inventors, who are always with new ideas, should know how to protect their intellectual property in order for their products to flourish in the market. The universal waterproof camera case developed by William Yim Huilam, President of Zear Corp Ltd is one glorified example to explain that. Before the product was introduced to the market, Yim applied several patents for the product, covering various aspects of its design and functionality in different regions. These patents have proven their validity from IP infringement. Within 2 years, the company has sold 30,000 to 40,000 of these patented universal waterproof camera cases.
Yim was originally in the business of advanced technology trading.
Four years ago when he travelled to Italy to study optics and the operations of medical practices, he was surprised to find that despite the high cost, the makers managed to produce locally while keeping up with innovative products. This got him thinking, “Why can’t this be done in Hong Kong?”
After communicating with several local start-up owners, he came up with three reasons: 1) To create a private brand to increase profit margins, 2) To apply for patents to protect profits, and 3) To cut down logistic and management costs in order to balance out the high labour costs. “Coming back to Hong Kong after these enlightening observations, I started to think how to use patented products to open up new paths.”
Yim himself loves scuba diving and is bursting with all kinds of ideas. Ten years ago, he won an Industrial Design Award in Hong Kong. “A lot of water sports enthusiasts want to record the underworld and have snapshots for their memories. Yet, the quality of the pictures taken by waterproof cameras on the market is not appealing,” said Yim. “So I thought of designing a case that would be suitable for different cameras, that is, a universal waterproof camera case three years ago.” he said.
Yim emphasizes all concepts and designs of the new products have to be confidential and only the management level should know the details of the research. Also, before the launch of the product,
the inventor should first apply a provision patent of utility model in Hong Kong and China and PCT provision patent in the United States. At the same time, to increase protection of the product, the innovator should also apply diversify patents covering different aspects of the designs. Spontaneously, filing patent applications formally in all those jurisdictions where provision patent utility model were applied. Once the applications are filed, the innovator could safely launch the products to the markets.
The company’s universal waterproof camera case is made of polycarbonate, a lightweight high performance plastic, and can be used at a depth of up to 40 meters (130 feet). It is also shock proof up to a height of one meter and can be used in temperatures as cold as minus 10 degree Celsius and as hot as 60 degrees Celsius. The core patented technology has to do with the push button adjustment. "The position of the push button has been designed with precision instruments; it is adjusted by an 'actuator' which allows it to be used with the on-off switches and buttons of both large and small cameras."
He stresses that one patent is not enough to completely protect new products. . In order to strengthen the patents protection for the Seashell, the company applied patents on various aspects of the product, such as the shape, the design of the rim, the lock, and others. “Fortunately Hong Kong is rich in IP attorneys who provide professional advices to allow companies to develop more effectively.”
He revealed his company has sold between 30,000 and 40,000 universal waterproof camera cases in the previous two years. Over 50% of the orders are from the United States and the rest from Europe and Southeast Asian markets. “Such remarkable sell report is indeed a great motive to a new Hong Kong brand.” Yim added.
Despite the mentioned remarks, Zear Corp. faced one unanticipated incident during its product development process. Yim shared an incident at a Photographic products exhibition in Cologne, Germany. He found a Mainland company infringed Zear’s patented waterproof camera case and promoted the products to the buyers in the same fair. He immediately reported it to the fair management about the incident. Spontaneously, he called his Hong Kong patent attorney and asked him to prepare all the relevant documents about its patent to the organizer of exhibition for dispute application. The fair organiser confiscated all infringed products and the incident was settled. However, this is not the end of the story. Zear Corp. recently discovered that the same Mainland company has violated IP rights again. Zear Corp. then collected all evidence of their business in Hong Kong through their Hong Kong patent attorney and sued them. Finally the court has forbidden them to sell the products again. This experience made him realise the importance of IP protection.
To expand the company’s business, Zear Corp. recently extended the principle behind the patented waterproof camera case to produce waterproof cases for smart phones, which cover iPhone, Samsung and other smartphones. The company has also developed a photography app for iPhone. Photographic application and functions could still be accessed like normally would even with the waterproof case on your phone. "The company has registered the brand name trademark 'Seashell', all to protect our business development." He said.
As for the cost of applying for a patent, Yim said the process was expensive and could cost as high as HK$100,000 given the need for applications in every key patent region and costs throughout the entire application process. However, Small and Medium-sized Enterprises (SMEs) should consider applying for the Patent Application Grant funding scheme, set up by the Innovation and Technology Commission of the Hong Kong government, for which both companies and individuals are eligible. "All applications for functional patents and inventions with technology elements are eligible. However, no grants are made for the external or cosmetic design. The implementation agent of the scheme, that is, the Hong Kong Productivity Council, will first conduct a patent search-cum-technical assessment to ensure that there is a reasonable chance of obtaining patent.”
If there is any inconsistency or ambiguity between the English version and the Chinese version, the Chinese version shall prevail.