During prosecution the Applicant is constrained strictly to the wording in the original patent application. This means the quality of the original drafting is very important. To give yourself the best opportunity for securing the protection you require then the technical and legal content of the original document must be carefully prepared. We believe that the client is best served by starting with the end in mind, that is to with clear knowledge of the invention and the technical context of the relevant field. The best results are usually achieved when technical experts from the client engage with our attorneys in the drafting process.
We have experience and tools to file your cases directly at the UK Intellectual Property Office (UK IPO), European Patent Office or alternatively as a PCT application.
In many territories around the world the opportunity to prosecute your patent applications has been reduced and so it has become more important to take the opportunity in the International Phase to respond to objection raised by the Examiner. This is an optional step and can be done by filing a form (referred to as a demand) and paying a fee and submitting the arguments. We have used this to good effect with some clients to rapidly gain grant after national/regional phase entry.
As chartered UK patent attorneys we have specific knowledge of prosecution patent applications at the UK Intellectual Property Office. We are expert in guiding you through the UK patent system and highlighting the ways in which the UK patent systems differs from the European system.
We have special expertise in practicing before the European Patent Office and have been very successful in securing grant of cases for clients. In particular, we can propose ways to amendments to your pending claims to progress the application and secure protection for the important aspects of your technology.
We have been engaged, on a number of occasions, to assist with European cases that have languished in prosecution for as long as 10 years.
For a number of clients we handle their whole portfolio of cases and direct prosecution all around the world, including countries such as Argentina, Australia, Brazil, Belarus, Bolivia, Canada, Chile, China, Columbia, Croatia, Ecuador, Guatemala, Hong Kong, Indonesia, Israel, India, Japan, Korea, Mexico, Malaysia, Norway, New Zealand, Panama, Peru, Philippines, Russia, Singapore, Thailand, Taiwan, Ukraine, US, Uruguay and Venezuela.
We have significant experience in US practice including filing requests for re-examination, preparing inventor’s technical declarations, terminal disclaimers, conducting Examiner interviews, issues under 35 USC 101.
We have a strategic alliance with Insight IP in Beijing and Knowles Intellectual Property Atlanta.
We have experience gained in the context of big pharma and we have used that to help our smaller biotech clients to build portfolios and strategies that will assist them in realising the value of their intellectual property.
For very valuable assets it is possible to build layers of protection based on improvements and new developments in the technology. This can assist in optimising the term of patent protection around the technology. However, clients are sometimes unaware of all the types of inventions that are capable of protection and at the opportunities to gain extra protection.
We can work with you to identify these opportunities and ensure that you maximise your protection.
We handle the formalities for UK national phase entry (form NP1 and a fee) and can represent you before the UK Intellectual Property Office.
We handle the formalities for European regional phase entry
We can represent you before the European Patent Office.
We have specific experience in patent prosecution in Turkey. We handle formalities for regional phase entry and we can represent you before the Turkish Patent Office in all proceedings.
We handle the validation of European patents in territories selected to continue the case in. We are familiar with the London agreement. We prepare translations and ensure the formalities are complete in each territory.
We handle the formalities at the UK IPO for validations, which involves recording ourselves as the address for service of the case.
We prepare translations and handle the validation formalities at the Turkish Patent Office for the patents granted by the EPO.
We have significant experience in preparing, filing and progressing oppositions to European Patents. The opposition must be filed within 9 months from the publication of the mention of grant in the official journal.
We have recently developed relatively inexpensive and creative strategies to deal with problematic freedom to operate issues using the ability to file prior art as anonymous third party observations. We have found third party observations to be a very useful tool in minimising and clarifying potential freedom to operate issues.
We have been very successful in defending oppositions filed against cases owned by our clients. We work closely with our clients to pull the appropriate evidence together and submit strategic amendments to the claims if appropriate.
We also have also used the European Opposition Proceedings with good effect to secure freedom to operate for our clients.
Part of the opposition and appeal process before the European Patent Office involves presenting the legal and technical issues to the adjudicating panel. This requires excellent knowledge of the legal framework and case law, which governs the procedure. We have a good understanding of which strategies are successful at the European Patent Office and we are able to present your case in a way that optimises the opportunities for success.
We are able to represent you at hearings before the UK Office. We have experience dealing with the hearing officers.
We conduct freedom to operate searching to identify third patent rights that could block or hinder commercialisation of your technology.
This is a key aspect of our practice aimed at identifying risks that could impact on the commercialisation of your technology. The issues are important to identify early because this allows proactive steps to be taken to minimise the risk of design around the block. This analysis is best performed at an early stage before you have invested significant resources into commercialising the technology.
For an appropriate and balanced analysis a good understanding of the technology is required. We have excellent technical skills and years of experience in providing opinions on finely balanced matters. We work with you to understand the issues and give practical and helpful and realistic advice that will assist you in moving your business forward.
We routinely perform due diligence for acquiring assets and for VCs looking at investment opportunities. We also assist our clients when they are subject to due diligence
We can assist in interpreting and drafting IP clauses in contracts.
We handle renewals fees for cases in all territories.
We have experience seeking revocation under S72 UK Patent Act 1977 before the UK Intellectual Property Office. We can assist you if you intent to use this procedure.
This non-binding opinion may be useful if you want to engage in negotiations with a patentee. If the opinion is negative regarding the validity of the patent then this can be used as a tool to settle the matter in a more favourable way. A procedure is being introduced where the UK Intellectual Property Office can start a revocation action after issue of a negative opinion on the validity of a case. We have experience requesting opinions before the UK Intellectual Property Office and can assist you with this process.
We routinely prepare evidence for submission to proceedings including preparation of inventors technical declarations and expert opinions for submission to US prosecution and oral proceedings.
Inventorship determination can be difficult and emotive subject and it can be important for the validity of the rights that the determination is handled properly. We can assist you with this process.
We prepare sequence listings in a format compliant with the Patent Office standards.
We routinely prepare and file design applications. We can assist you with this process.