The decision to obtain patent protection for one´s technical solutions or to market them should be based on the minute knowledge of the state of the art and extant exclusive rights of other parties.
A patent search is performed to determine the type and scope of technical solutions related to these solutions in question and ascertain the legal status thereof. The results of such search may be used to draft a patent application or in the design of a novel technology. The conclusions obtained during patent searches often allow one to avoid unnecessary expenditure on research and development, on imported technologies, or on remuneration for owners of infringed patents. In a competitive market, the common usage of patent protection forces entrepreneurs to possess extensive and up-to-date knowledge of protected solutions. Such information is essential for making informed decisions, particularly during project design, negotiations with technology suppliers and market entry.
The scope of research services offered by WTS encompasses:
Patent purity searches:
- general, relating to the initial framework of a project, such as the active substance of a drug composition, its polymorphs, synthesis pathways, initial patent status, and information on SPC protection in individual countries;
- detailed, relating to a particular technical solution, i.e. a drug composition, technology, product, or chemical compound synthesis pathway;
- updating, for checking on new solutions since the last general or detailed search;
- monitoring of the competition, supervision of the activities and development directions undertaken by the market competitors based on published patent applications:
- general, relating to an area of technology, such as an IPC class referring to a particular field,
- detailed, encompassing indicated market competitors.
Patent searches, performed on the basis of data supplied by the Client within the confines of a confidentiality agreement, are performed using public domain data sources, such as national or regional intellectual property offices as well as databases, such as Delphion or Chemical Abstract. The monitoring frequency and scope are determined ahead of time with the Client.
A serious risk of infringement of the exclusive rights of a third party is often revealed as a result of a patent search. An in-depth comparative analysis of the researched technology vs. that protected by third party rights of ten initiates defensive activities against any possible prohibitions on the commercial use of the client´s research.
Infringement of third party rights is a particular concern for the pharmaceutical industry, often deciding on the fate of the market entry of a product. This is particularly evident in the case of generics, where we increasingly see infringement risks with patents protecting particular aspects of manufacturing medicines (i.e. particular polymorphs, methods of manufacturing an active substance or its specific salts and crystalline forms as well as dosing methods and schemes).
To avoid the often-unjustified charges of infringement and the legal consequences thereof, i.e. a sales ban as a result of an injunction obtained by the rights holder, we suggest a defensive legal strategy. We possessan experienced, multi-disciplinary team of specialists who possess both the necessary procedural experience as well as the technical education required to pursue the subject matter.
To strengthen then and protect our Client´s market position, we pursue complex legal strategies (“torpedo strategies”) which include the initiation of declaratory proceedings to determine non-infringement of third party rights, whilst running simulataneous limitation or invalidation proceedings before the Polish Patent Office.
In effect, our procedures give our clients legal protection for their marketing activities against any possible charge of infringement of their competitors intellectual property rights. Moreover, this process results in an improved negotiating position for the Client for future licensing or settlement operations.