We can help you to determine what IP you as an individual or a company is generating, what IP should be protected and, importantly, why. We can also help you to determine what IP you already own and how best to manage that IP going forwards.
A key driver for filing a UK or European patent application may be to benefit from a reduction in Corporation Tax which is currently available under the governmental ‘Patent Box’ regime and which is applicable to profits earned in relation to products or processes covered by a granted UK patent, a European patent which designates the UK, or a patent granted by a number of Patent Offices in specific European states.
We work closely with a number of UK and overseas independent searching companies to carry out detailed patentability and validity/infringement searches which often form the first stage of a patentability assessment before filing a new patent application, a detailed validity/infringement analysis in relation to a competitor, or a Freedom-To-Operate (FTO) assessment before launching a new product or process.
As part of a validity/infringement assessment, a client may wish to be provided with a non-binding opinion from a qualified patent attorney which details why, in our opinion, a granted patent or registered design is valid or invalid and/or infringed or not infringed. Alternatively, a client may wish to obtain an official opinion from the UK Intellectual Property Office (IPO) as to whether or not a UK or European (UK) patent is valid and/or infringed and which is owned by, or is of commercial interest to, the client. Such an opinion is non-binding but can help to negotiate a settlement or to decide whether to start full legal proceedings against a third party. Furthermore, the IPO can begin revocation proceedings if a patent is found to be invalid.
Sometimes a competitor’s patent or patent application may present a hurdle or threat to your commercial activities. We can advise and assist with invalidating a granted patent or preventing a patent being granted. Likewise, we can help if a third party has filed observations against your patent application or has attacked the validity of your granted patent.
As part of a corporate acquisition or merger, we have the experience to conduct a detailed review and assessment of an existing IP portfolio to confirm what is about to be acquired fully meets the client’s expectations, and also to determine the strengths and weaknesses of the IP assets within the portfolio in terms of territorial coverage, ownership, scope and/or validity.
We regularly set up watches to closely monitor third party patent activity as part of an ongoing ‘freedom to operate’ assessment and/or to keep abreast of new patent filings relating to a particular technology.
Whilst we are happy and able to provide general advice in relation to trade mark and copyright matters, we often refer such work, particularly if even remotely litigious, to qualified trade mark attorneys or IP solicitors who we work closely with.
