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Patents

Patent literature, consisting of all patent texts, is an essential source of technical information for the design of new products. Furthermore, it often contains information that may allow an assessment of the validity of a new patent application intended to be filed. It is therefore good practice to carry out a patent prior art search before filing a new patent application so as to assess its patentability requirements and appropriately calibrate its scope of protection.

Trademarks

Before adopting a trademark, it is always advisable to carry out a search among earlier trademarks so as to detect identical/similar trademarks whose owners could oppose to the registration and use of the proposed trademark. This allows to safeguard economic investments that could then be challenged by third parties. Since a large number of trademarks are filed on a daily basis, it is not uncommon for one or more of them to be in conflict with a trademark of interest, thus causing confusion or other prejudice. To effectively counter this risk, a surveillance service can be adopted, thus allowing to immediately take the administrative actions to prevent the registration and then the legitimate use of the confusing trademark. This allows to avoid losing market shares and to contrast similar trademarks at limited costs, compared to the more expensive legal actions.

Designs

Designs Prior art searches allow to better focus new design filings, ensuring an adequate level of protection and minimizing possible objections that may be raised during examination at patent offices in various jurisdictions.

National, regional and international regulations provide for the possibility of challenging the validity of a patent through administrative or court proceedings. This is often necessary in the event of disputes relating to the infringement of a patent. Since patent literature is a very broad source of technical information, it is useful to carry out specific searches aimed at identifying documents that can be used to challenge the validity of a patent.

Freedom to operate opinions are an important part of our services and are aimed at assessing the risk of interference of our clients’ product or service with third parties’ patent rights. Our service is not limited to this analysis, but provides suggestions for mitigating interference risks, including “design around” and “patent around”, observations by third parties, oppositions, invalidity actions depending on the specific circumstances.

This activity constitutes a significant part of our services, through which we provide suggestions to our clients so as to minimize the risk of infringement, to avoid interference with design rights of third parties, as well as to take action against the latter when the conditions are met.

Freedom to operate with respect to standard-essential patents (SEP)

This service, in addition to the evaluation of the freedom to operate, provides for a preliminary assessment of whether a patent protects a technology whose use cannot be avoided in the production of devices that, for interoperability reasons, must comply with shared technical standards (standards). In this case, the patent is standard-essential. Such assessment is necessary because the essentiality to the standard is currently based on a self-declaration by the patent holder.

Landscaping searches are directed to:

• identify opportunities for innovation that are not yet protected;
• identify possible competitors and their activities;
• identify possible collaboration and partnership opportunities;
• identify trends in technology and in the market in the embryonic stages.

Patents

A patent can be enforced through the customs authorities to stop infringing products. The customs surveillance service should be carefully assessed based on the circumstances and limited to patents whose infringement is easily detectable, such as standard-essential patents.

Trademarks

Customs surveillance and actions are effective means against counterfeiting. We assist our clients at every stage of the procedure, from the filing of the application with the Customs, as well as the management of each notification issued by the Customs.

Designs

Being instantly intelligible, design is particularly suitable for blocking counterfeit goods at customs. Our experience in using the various platforms for filing applications for customs actions (e.g. the Enforcement Database) allows us to promptly notify counterfeiting and piracy officers at national and EU level.

Patents

Trade is moving onto the web and this trend is growing, as is counterfeiting on this channel. With this service, we are at our clients’ side with IT supports to search for and identify infringing products on the web and take action to protect their intellectual property rights.

Trademarks

Internet now reaches any operator and client in real time anywhere in the world. What happens on the Internet therefore has important consequences on the perception of the brand, product offerings and corporate image by the public and clients. We are very active in protecting our clients’ trademarks and other distinctive signs on the web, assisting you through take-down actions, reassignment and other procedures. As a result of the experience gained over the years, we have recently defined, together with our technology partner, a platform that allows not only timely surveillance on the Internet but also an effective management of notifications to obtain the cancellation of web pages bearing counterfeit brands and products.

Designs

We adopt several systems for monitoring counterfeiting on the web. Through the use of sophisticated software for recognizing and comparing images, we can detect the presence of products interfering with our clients’ registered designs. Once interference is detected, we can take action to request the removal of such products from the web.

Monitoring the industrial property rights of third parties allows to acquire information as soon as available and to take action to limit the scope of protection of third parties’ rights, prevent their grant or cause their revocation. It is therefore a tool of primary importance for identifying possible risks and implementing risk mitigation measures.

Patents

The surveillance of competitors consists in promptly discovering third parties’ patent applications that could hinder the marketing of our clients’ products. Periodic surveillance allows us to identify risks and take actions aimed at invalidating patents that are assessed as risky. We can advise on the surveillance strategy that best suits your needs and competitive context.

Trademarks

Since a large number of trademarks are filed on a daily basis, it is not uncommon for one or more of them to be in conflict with a trademark of interest, thus causing confusion or other prejudice. To effectively counter this risk, a surveillance service can be adopted, thus allowing to immediately take the administrative actions to prevent the registration and then the legitimate use of the confusing trademark. This allows to contrast confusing trademarks at limited costs, compared to the more onerous legal actions.

Designs

We offer a wide range of services for surveillance of design applications filed by competitors and for monitoring design prosecution in the relevant filing countries. This allows to avoid possible interference with third parties’ rights and to take prompt actions if circumstances so require.

Before acquiring or licensing a portfolio of IP rights, whether patents, trademarks or designs, it is good practice to perform due diligence. We assist our clients in identifying and assessing the following legal aspects:

• Status;
• Validity;
• Availability for registration;
• Scope of protection;
• Freedom to operate;
• Enforceability in litigation;
• Ownership;
• Possible relationships with standards;
• Possible trade restrictions.

We can also assist our clients in the evaluation of economic and/or strictly technical-productive aspects through a network of proven experts.