Patents are essential for the protection of technology and require a combination of technical knowhow and legal expertise. Drafting patents applications requires high technical and legal skills and an accurate choice of terms and wordings.
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We have gained long-standing experience in drafting patent applications, meeting the needs of jurisdictions around the globe and taking into account continuous changes in jurisprudence and in the rules on the interpretation of patents. A team of consultants, specialised respectively in the technical, IT and scientific fields, allows us to process patent applications in any area of technology.
The long-standing experience, skills and technical knowhow of our consultants allow us to recommend the best strategy for the prosecution of applications in order to reduce the number of Office Actions and obtain legally solid patents with a broad scope of protection.
Filing a notice of opposition with the European Patent Office (EPO) is an essential means for technology companies to reduce the risk of litigation and remove obstacles to technology development. Studio Torta is the Italian Intellectual Property firm with the greatest experience in dealing with such issues at the EPO.
Observations by third parties filed with the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) are less expensive than oppositions and can be very useful in specific circumstances, because they reduce the risk of litigation and they remove obstacles to technology development.
Supplementary protection certificates, available for all EU countries, serve as an extension to patent protection and “compensate” the patent owner for the length of time taken to obtain the marketing authorisation for a drug. Once again, Studio Torta has gained considerable experience in filing certificates and in related litigation.
Monitoring competitors consists in promptly tracking third party patent applications that could constitute an obstacle to the marketing of our clients’ products or services. Regular monitoring activities allow us to evaluate risk mitigation measures and/or take action to invalidate patents and designs that are regarded as risky. We recommend the best monitoring strategy tailored to our clients’ needs and to the specific competitive scenario.
Before starting a new project, it is important to check whether any third parties hold IP rights that could hinder the client’s intellectual and financial efforts. It is useful to monitor patent activity in the technical field of reference, so as to identify any subject matter for new patents. We help clients devise the best patent search strategy to guide their investments in research and development.
An important part of our work is to conduct “Freedom to Operate” analyses, designed to detect whether a product infringes third parties’ patent rights. Moreover, we provide suggestions on how to mitigate the risk of infringement (e.g. “design-around” and “patent-around”), as well as observations by third parties, oppositions and invalidity proceedings, based on the specific circumstances.
In addition to “Freedom to Operate” analyses, we also conduct preliminary checks to determine whether a specific standard falls into the scope of protection of one or more patents. If it does, the patent is defined as “standard-essential”, i.e. the patent protects a technology that must necessarily be used to produce devices which, for reasons of interoperability, must comply with shared technical standards.
Commerce is moving more and more onto the Web, with a consequent rise in Internet counterfeiting. We provide specific IT support designed to search for and identify counterfeit product on the Web and protect our clients’ Industrial Property rights.
We provide effective due diligence, analysing a patent portfolio before a commercial transaction is carried out in order to verify the status of the patents or patent applications from a legal point of view, and possibly the scope of protection they offer the purchaser of the rights.
Many of our consultants have extensive experience as court experts and/or ex-parte experts, respectively supporting judges or lawyers in patent litigation. The court expert, based on submissions by ex-parte experts draws up a non-binding report on the infringement and/or validity of the patent. In the vast majority of cases, the outcome of his work is endorsed by the judge.
On rare occasions, patents can be enforced through the competent Customs authorities. This route should be carefully considered, based on the circumstances and solely with regard to patents that are easy to interpret.