It is often necessary for businesses to obtain analyses and expert opinions with regard to technical products, designs, or trade marks, particularly in situations where a business develops a new product and there is a suspicion that an IP right may be infringed and/or when an IP due diligence analysis is to be performed.
When your business develops a new product, an assessment should be made as soon as possible as to whether the product is, in principle, eligible for protection and whether an application for a patent, a utility model, or a design should be filed. If you intend to file an application for a patent, an assessment of the prospects of a patent being granted will help you to decide whether, and to what extent, you can protect your invention with a patent or utility model. An assessment of the prospects of a patent being granted may also be made with respect to prior art or existing products that are known to your company or have been ascertained by a search. When, for example, a business develops an invention, the assessment of these prospects is often performed by an in-house panel supported in its decision-making by a patent attorney. If the outcome of the assessment is negative, wasting time and money on drafting and submitting an application for patent or utility model protection can be avoided. If, however, the outcome is positive, you will benefit from the patent attorney being able to use the information obtained when drafting the application.
If you are concerned that a product you sell or a method you use may be infringing an IP right belonging to a third party, in particular a patent, a utility model, a design or a trade mark, or if you have already received an enquiry as to entitlement or a warning letter, an expert opinion can be a quick and effective way of clarifying whether you are actually infringing the IP right in question. An expert opinion can also be provided to clarify whether one of your competitors is infringing one of your patents, designs or trade marks.
When drawing up an expert opinion, an attorney may, in coordination with your product developers, look for opportunities for circumventing the IP rights of third parties in terms of technology or design, or, together with your marketing team, look for ways of distinguishing your products’ characterising features from existing trade marks of third parties. Furthermore, the validity of an IP right can be analysed and assessed as to whether or not there are reasonable prospects of successfully challenging the IP right in question by way of opposition, revocation, or cancellation proceedings.
In an IP due diligence analysis the intellectual property of a company is analysed in detail. The analysis identifies what patents, trade marks, designs, and/or licences the company in question has in which countries and whether or not these are still formally in force. IP rights that are still in force are examined with respect to their validity and their enforceability against third parties. It is also possible to analyse the extent to which a company’s existing IP rights provide sufficient protection for the company’s products and services. A so-called freedom to operate analysis is performed to determine, based on search results obtained from a search, whether or not a product of one company is infringing the IP rights of a third party, i.e. to determine the extent to which the company is free to operate in terms of producing and selling the product in question. This is also known as product clearing. This leads to improved legal certainty, which is particularly beneficial when introducing new products onto the market.