- Freedom to operate
- Patentability study
- Panoramic searches
- Searches for oppositions
Intellectual property audit
Before developing a strategy for the protection of intellectual property that is tailored to a specific company, it is useful to establish an intellectual property audit. Such an audit may be required by an external investor, such as a Venture Capitalist, in the event of a merger or acquisition, or within the frame of the CTI Startup process.
The purpose of this operation is:
- to identify the relevant elements, for example patents, trademarks, know-how, developments etc., which give the company a competitive edge over its competitors;
- to verify if these elements have been properly protected by intellectual property titles that might possibly already be owned;
- to verify the risks run by the company as regards patents held by competitors in the specific field of activity.
Freedom to operate
The aim of freedom to operate searches is to verify whether a new product can be commercialized without infringing existing patents. These searches are often performed even before the product has been fully specified in order to adapt its characteristics to take into account third party patents. Freedom to operate searches are generally much more complex than patentability searches; for each discovered patent, it is necessary to check the terms of the claims as well as the legal status, in order to ascertain exactly its conferred scope of protection. At P&TS, this task is performed in close collaboration between the search and intelligence specialist and the patent attorney.
In order to interpret more delicate claims in non-European patents, we call upon our international network of specialized correspondents for a reliable assessment of scope and legal status of the patents. The results of a freedom to operate search consist usually of a list of documents on paper or accessible through a secure connection via our site www.propis.com, accompanied by a report clearly identifying the likely risks caused by each patent as well as the possibilities of overcoming, attacking or obtaining a license for these patents.
Once this inventory has been completed, the principal aim of an intellectual property strategy should be to try to protect and develop the identified intellectual capital and to limit the risks as regards patents and other intellectual property titles owned by competitors.
For example, if a company or product enjoys a good reputation, it may be appropriate to protect the name by means of a trademark and simultaneously to increase the notoriety of this name by targeted marketing operations. If a product can be made more attractive by its technical characteristics, or if it can be manufactured at a lower cost thanks to a new process, the possibility of a patent should be considered.
Patent information searches: resources
P&TS enjoys considerable experience and resources with respect to technology surveys and economic intelligence. The searches are performed by engineers with a specialization degree in searching techniques or by former European Patent Office examiners . Our search specialists have thus all benefited from advanced training in database interrogation and datamining. Regular proficiency courses allow all our specialists to keep up our high standards in this fast-evolving domain.
As the searches are always carried out in close collaboration with the patent attorney in charge of the file, the search results are of course also analyzed by specialists in the art of interpreting patents and claims. Furthermore, the technical knowledge acquired by the patent attorneys during the search proves useful when drafting an application in the same field.
P&TS has subscriptions with the main suppliers of patent and technological information, which allows us to perform searches in over 5’000 professional databases that are not available on the Internet. These databases cover patents, publications, company announcements and press releases published in the main industrialised countries. In our main fields of activity, we moreover own a large internal collection of documents. The search results are converted into a common proprietary format and stored in the database PROPIS which we created. The final users can, on subscription, connect at any time through secure Internet connections to this database to consult or download the documents that concern them.
The aim of a patentability study is to ascertain whether an invention submitted to us fulfills the conditions for obtaining a patent. For this purpose, we check mainly the novelty and inventiveness implied by the invention by means of a search in our databases. The results of the analysis are made available on our site www.propis.com accessible through a secure interface. The result of the analysis is a detailed report generally containing a list of documents disclosed during the search (e.g. patents, but often also scientific articles, publications, web pages etc.) as well as concrete advice as to the possibilities of protection in the different countries.
The patentability search usually makes it possible to better define the inventive contribution of a new product over the prior art and thus allows to optimize the subsequent drafting of a patent application by very clearly distinguishing over the prior art discovered. It also enables the protection strategy, e.g. the initial choice of countries or the contents of the claims, to be adapted according to these results.
Panoramic searches make it possible to know the general tendencies in patent matters in a particular field of activity. According to the number of patents available in the searched domain, the results can include for example statistical data on the evolution of the number of patents published each year, the main applicants, the most active areas, the current search tendencies, etc. Particularly relevant or representative patents are extracted to illustrate the search.
This type of search is useful to apprehend a very wide field for which an exhaustive search would not be practicable or to define a specific field before establishing a periodical technology survey strategy. For users having subscribed to this service, the search results can be visualised through a personalized access to our site www.propis.com.
Searches for oppositions
Three options are open when a third party patent liable to threaten the activities of a company is discovered: to acquire a license, to modify one ’s product in order to circumvent the patent, or to have said patent invalidated for example by means of an opposition procedure. This latter solution is however only possible if the patent lacks validity, e.g. if it is devoid of novelty or if the grant procedure has been marred by such mistakes that a revocation is indispensable. We can assist you in having a patent invalidated and for all the steps required in an opposition procedure. We usually start by complementing the search supplied by the Patent Office that granted the patent in order to ascertain whether all relevant documents have been taken into account.