Assessing Inventions for Patenting
Prior Art Searches. We conduct prior art searches to help establish whether inventions meet the novelty and inventiveness criteria required in order to obtain patent protection. Searches are conducted in-house, or by specialist searching firms under our guidance. We interpret the search results for our clients, so that they can understand the scope of protection that is likely to be available for their inventions. Our aim is to ensure that effective searches are carried out and to provide clear and frank guidance on the merits of filing a patent application in view of the search results.
Statutory Exclusions from Patentability. Where appropriate, we advise on whether an invention may fall foul of the various exclusions to patentability in Europe and elsewhere, such as business methods, computer software and methods of medical treatment. We have extensive experience of advising upon the best approach to protecting inventions related to these fields.
Timing of Patent Applications. Another aspect of invention assessment is deciding upon the timing of filing a patent application. Whilst the enduring concern is to secure the earliest possible filing date for a patent application in order to secure a position against third parties, timing may need to be adapted according to the stage of development of the invention, to allow sufficient testing or experiments to be completed, or to reflect commercial priorities. Where multiple inventions are being assessed together, prioritising inventions for patent filing may also be appropriate.
Drafting Patent Applications
Drafting Quality. We have expertise in drafting patent applications optimised for the legal systems of all major jurisdictions around the world. Whilst responsive to the tight time frames often dictated at this stage of the patenting process, we are uncompromising on the quality of each and every patent application we draft. Almost invariably, each patent application we draft is reviewed by a second patent attorney within our office before being forwarded for filing. Casting fresh expert eyes over a patent application before it is filed can often prove invaluable.
Communication. Understanding between inventors and patent attorneys is vital in order ensure that patent applications cover inventions optimally. A face to face meeting is often useful, but we are equally happy to work remotely, by email, telephone or video conference. The important thing is that we take the time to properly understand the invention and the commercial context, to ensure that we adopt the best approach for protecting the invention.
Prosecuting Patent Applications
Worldwide reach. We prosecute patent applications to grant throughout the world. We represent clients directly before the United Kingdom Intellectual Property Office, European Patent Office and World Intellectual Property Organisation. Elsewhere, we manage prosecution with the assistance of our well established network of local patent attorneys.
Coordination. We manage prosecution to ensure that a consistent approach is adopted before the Intellectual Property Offices of the various jurisdictions in which a patent is sought. Our aim is to secure grant as efficiently as possible, minimising expense to clients whenever possible, whilst ensuring that the broadest and most commercially effective protection available is obtained.
Interviews and Oral Proceedings. We have a strong record of success in Oral Proceedings before the Examining Division of the European Patent Office. We also have particular expertise in managing strategy before the United States Patent and Trade Mark Office, holding interviews with Examiners and making use of Appeal procedures where appropriate.
Managing and Enforcing Patents
Searches and Management
Searches. As well as novelty searches, we conduct watching services and competitor analysis to identify when competitors may infringe our clients’ patent rights. We also conduct freedom to operate searches to identify intellectual property rights that may be infringed by proposed commercial activities.
Enforcement. When infringement is suspected, we advise on the strength of our clients’ case, ensure that prosecution strategies are adapted and that all appropriate action is taken to optimise our clients’ position. Where enforcement is required, we assist with the initiation of appropriate enforcement measures, as well as subsequent negotiations and ultimately litigation.
Defence. If any infringement risks are identified, we advise on how the risks can best be reduced. We can assess ways in which a patent may be worked around. We can also identify weaknesses in third party rights and deal with revocation action where needed.
European Patent Office. We have a strong record of success in Opposition Proceedings before the European Patent Office. Whether acting on behalf of an Opponent or the Patent Proprietor, we can advise on the merits of an Opposition at the outset, giving a good indication of the likely outcome.
United Kingdom. We have expertise in conducting revocation proceedings before the United Kingdom Intellectual Property Office and national courts in the United Kingdom. Revocation proceedings are sometimes of value in themselves, but more often than not form part of a wider strategy or dispute.
Rights of Audience. We can represent clients directly before the United Kingdom Intellectual Property Office and the United Kingdom Intellectual Property Enterprise Court, and liaise with solicitors and barristers to represent our clients before the High Court, Court of Appeal and Supreme Court of the United Kingdom.
Strategy. It is rarely in our clients’ interests to resort to litigation to resolve intellectual property disputes and we can work with our clients to help broker commercially acceptable agreements. When litigation is required, we can use our rights of audience in the UK to represent our clients, or we can integrate with legal teams appropriate to the jurisdiction. We have particular expertise in assisting with the management of US based litigation on behalf of clients based in Europe.
Assignments and Licences
Preparing Agreements. Transactions in intellectual property, whether assignments or licences, vary widely in complexity. We can work as sole advisors, drafting and negotiating agreements on behalf of clients. Alternatively, we can work as part of a team of advisors, providing specialist advice on the intellectual property aspects of an agreement. We also deal with any required registration before the appropriate Intellectual Property Offices.
Due diligence. Often a prelude to a transaction, and required in preparation for investment, we prepare intellectual property due diligence reports to meet varying requirements. Sometimes verification of the extent and content of an intellectual property portfolio is required. More extensive reports may involve novelty and/or freedom to operate searching to properly assess the strength of the intellectual property and its positioning with respect to competitors.
Other Intellectual Property Rights
Registering Designs. We advise on all aspects of design rights, from the initial assessment of protectable design elements to securing grant of design registrations around the world. We represent clients directly before the appropriate authorities to obtain grant of United Kingdom and European Community design registrations. In other jurisdictions, we manage prosecution with the assistance of our well established network of local attorneys.
Advice of Designs. We conduct novelty searches for registered designs and advise on whether a design is registerable. We also advise on the likely scope of protection that will be conferred by registration in view of the statutory limitations. Where appropriate, we advise on the applicability of unregistered design rights and copyright to new products to ensure clients are provided with a full picture of the rights available to them.
Registering Trade Marks. We advise on the availability of trade marks for use and handle the registration of trade marks throughout the world. We prosecute applications directly before the United Kingdom Intellectual Property Office and the World Intellectual Property Organisation. With the assistance of local attorneys, we manage the efficient prosecution of overseas applications and ensure that a cohesive approach is taken to obtaining protection in all required jurisdictions.
Advise on Trade Marks. We advise on the suitability of new trademarks from a legal perspective. We conduct searches to identify relevant existing trade mark rights that may affect the freedom to use a new trade mark and advise on how any identified risks can be managed. We are experienced in defending against oppositions, acting decisively to protect the best interests of our clients.
Copyright. Copyright arises automatically in a variety of original work. We advise clients on the impact of this to their business, and how to manage copyright effectively.
Domain Names. We assist our clients in developing effective strategies for registering and managing domain names. We also represent our clients in dispute resolution.
Large organisations outsource patent work to us. For some we coordinate global management of portions of their patent portfolios, for others we handle European filing and prosecution. We also handle patent work in a “ghost” capacity for organisations that manage formalities in-house.
For companies in this sector we tend to provide a complete patent management service, reporting to commercial managers or heads of research and development. We aim to put them in a position to make well informed decisions about their patents without undue burden on their time.
Organisations that are involved primarily in research often invest in patents before a path to revenue generation is clearly established. We work with these clients to secure their position, whilst being sensitive to the need to balance expenditure with commercial progress.
Patent attorneys from all around the world engage our firm to handle patent matters in Europe. We work to help non-European attorneys adapt their global strategy for Europe and the United Kingdom, with a view obtaining optimum outcomes as cost effectively as possible.