Typical services we offer include an initial consultation and IP audit to assess what patentable ideas a company may have, including an initial indication of patentability for technologies of borderline technicality. This is most useful to break the chicken-and-egg cycle of “if we had investment we could protect our technology”. We can also look at registrable trade marks and designs.
Third Party Rights
When the boot is on the other foot, and a company may be entering a minefield of third party rights, we can scope out a search strategy to identify those rights. We can investigate specific IPRs that may have been brought to your attention. There are simple and fundamental checks to be made before engaging in correspondence with an IPR owner. Don’t delay. You may curtail your options.
The business of IPR is full of deadlines. A simple example is the ability to oppose a European patent. This is relatively simple and inexpensive and can be done anonymously, but there is a deadline and you will regret it if you miss it.
When acquiring a company with valuable IPRs, there are a number of things to consider in a very short timescale. For example, if the company’s resources have been stretched, it may not have met all its deadlines, or may not have kept open all the options available to it. This brings us to another example of a deadline - restoration of patent rights. Act quickly and you may succeed. Delay and you will not.
During an acquisition, it is typical for a date to be set when responsibility for prosecution transfers from seller to buyer. The earlier the portfolio can be assessed, the more rights can maintained and the better the buyer can be prepared for that date.
The acquisition documents and process of registering transfers of IPRs can be complex, and often unnecessarily so. Proper forethought can avoid huge expense later.
Negotiations and IP Agreements
Most patent-aware companies know that any technical discussions prior to filing of a patent application must be confidential in order to preserve patent rights. But this does not mean there is a one-size-fits-all confidentiality or non-disclosure agreement that covers this phase. Terms of such agreements will depend on the relative strengths of the negotiating parties. Beware – trade secrets are like ice – keep them in a freezer and they will last a long time, but they will melt away if not handled properly.
Moreover, if such negotiations drag out, and there is a breach of confidentiality, there is another deadline to consider, which is the 6-month period under Patents Act Section 2(4) or EPC Article 55.
We pride ourselves in having partners with a wide range of commercial backgrounds who have negotiated complex IPR deals of all types and can bring a rich perspective to your negotiations or add leverage to your client’s position.
Not all advisers are regulated. We are. Click here for details.