ip counselling
Freedom-to-operate opinion, IP defense strategies, ensuring eligibility of exclusive right
Freedom-to-operate opinion, IP defense strategies, ensuring eligibility of exclusive right

Patent Clearance Search and Freedom-to-Operate Opinion

When a new product is brought to market, it is extremely important for the enterprise to properly assess the risks of possible claims of infringement of the exclusive rights certified by patents or registered trademarks. If this circumstance is not be taken into account, then, further at the request of the rightholders, the enterprise may be forced to cease production, import and sale of the product or to enter into disadvantageous licensing agreement, being in a dead-end position.

Carrying out Patent Clearance Search will reveal both patents and registered trademarks which being in force in the Russian Federation and can be recognized as used in the above product, as well as published Russian and international applications by which such patents or trademarks can be obtained.

The results of the patent clearance search will be accompanied with a freedom-to-operate opinion made by the patent attorney that includes detailed analysis of the found patents and trademarks on the subject of use in the product. The freedom-to-operate opinion will also include an assessment of the likelihood of the above adverse consequences in the event of the lawsuit for prohibiting the civil turnover of the product and also suggestion of the possible line of defense. Such a lawsuit may be filed by the rightholder with the aim of terminating the alleged use of the patent or the trademark.

At the request of the customer, we will conduct analyze of the found patents (or trademarks) for the possibility of challenging the decision on their granting (or registration), and in case of revealing appropriate grounds may further to carry out this procedure in the Chamber of Patent Disputes.

In addition, we may offer another solution for withdrawal of the product from the scope of patent protected rights, for example, in the form of a minimal but sufficient change in product design and the like.

We are ready to provide you with a quotation on this service under your request

IP Defense Strategies and Trade Secrets

Often, effective protection of the intellectual property of the enterprise can not be ensured only within the framework of patent law. Russian civil law also recognizes the exclusive right to the know-how, albeit with some limitations.

We can help you to formulate the strategy for protecting of your intellectual property in the Russian Federation, and to determine which technical solutions can be effectively protected by the patent system in accordance with the domestic law and judicial practice, and, in contrary, which solutions should be kept in secrecy as a know-how.

In addition, on the basis of the legislation of the Russian Federation, we can assist in the formation of the regulatory framework of the enterprise regarding securing of rights to know-how, ensuring protection of them, and creation of the complex of the intangible assets of the enterprise.

Author and Patent Owner Relationship

When author of an invention is an employee of an enterprise who acts as an applicant for a patent application, it is extremely important for the enterprise to properly establish relations with this employee.

If this is not done, then the author of the invention may later, for example, challenge the receipt of the patent on the name of the enterprise in the court and demand to include him in the number of the rights holders. In the case where the invention is used in the main technological processes of the enterprise, further development of this conflict situation can lead to serious losses, up to paralyzing the work of the whole enterprise.

We will help you to properly arrange the relationship between the inventors and the enterprise, which, firstly, will allow to avoid the problems described above, and, secondly, will promote healthy business climate in the team and growth of the inventive activity of employees.

IP Position in Contracting of R&D

If your enterprise is a customer of R & D, we will help you to maximize the scope of acquired intellectual property rights as at the stage of conclusion an agreement on R & D by formulating the most favorable position, so at the stage of its implementation e.g. by conducting an audit of the results of intellectual activity.

If your enterprise is an executor of R & D, we will assist you in maintaining of your rights on the most important objects of intellectual property, without violating the obligations to the customer specified in the terms of the contract.

 

 

Ask your questions, we will respond to you promptly.